JUDGMENT OF THE GENERAL COURT (Third Chamber)
22 May 2012 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark PENTEO – Earlier Benelux and international word marks XENTEO – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 – Articles 75 and 76 of Regulation No 207/2009)
In Case T‑585/10,
Aitic Penteo, SA, established in Barcelona (Spain), represented by J. Carbonell Callicó, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Atos Worldline SA, established in Brussels (Belgium),
ACTION brought against the decision of the First Chamber of Appeal of OHIM of 23 September 2010 (Case R 774/2010‑1) relating to opposition proceedings between Atos Worldline SA and Aitic Penteo, SA.,
THE GENERAL COURT (Third Chamber),
composed of O. Czúcz, President, I. Labucka (Rapporteur) and D. Gratsias, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 17 December 2010,
having regard to the response lodged at the Registry of the General Court on 23 March 2011,
having regard to the reply lodged at the Registry of the General Court on 21 June 2011,
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 and pursuant to Article 135a of the Rules of Procedure of the Court, to give a ruling without an oral procedure,
gives the following
Judgment
Background to the dispute
1        On 1 December 2006, the applicant, Aitic Penteo, SA, filed a Community trade mark application at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2        The mark for which registration was sought is the word sign PENTEO.
3        The goods and services in respect of which registration was sought are in Classes 9, 38 and 42 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 9: ‘Apparatus for recording, transmission, reproduction of sound or images; magnetic data carriers, recording discs; data processing equipment and computers’;
–        Class 38: ‘Telecommunications’;
–        Class 42: ‘Consultant services carried out by highly qualified staff regarding technologies of information, rental services of computer equipment and consultant services in relation to computing’.
4        The Community trade mark application was published in the Community Trade Marks Bulletin No 16/2007 of 23 April 2007.
5        On 23 July 2007, the other party to the proceedings before the Board of Appeal, Atos Worldline SA, filed a notice of opposition to registration of the trade mark applied for in respect of the goods and services referred to in paragraph 3 above, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009).
6        The opposition was based on the earlier Benelux word mark XENTEO No 772120, registered on 8 September 2005, and on its international registration No 863851, registered on 12 September 2005, designating the goods and services in Classes 9, 36, 37, 38 and 42 and corresponding, for each of those classes, to the following description:
–        Class 9 – ‘Equipment for electronic funds transfer, including payment terminals; magnetic or electronic recording media; magnetic cards; automatic vending machines and mechanisms for coin-operated apparatus; cash registers’;
–        Class 36 – ‘Financial affairs; monetary affairs’;
–        Class 37 – ‘Installation, maintenance and repair services for data processing equipment, computers and their peripheral devices and for equipment electronic funds transfer’;
–        Class 38 – ‘Telecommunications, especially providing access to electronic databases accessible via online networks’;
–        Class 42 – ‘Rental of computers and other similar computer equipment for electronic transfer of funds; computer programming; design and updating for computer software; technical consulting in the field of computing; leasing access time to electronic databases accessible via online networks’.
7        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8        On 4 March 2010, the Opposition Division upheld the opposition in its entirety.
9        On 4 May 2010, the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
10      By decision of 23 September 2010 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal and upheld the decision of the Opposition Division. The Board of Appeal essentially took the view that there was a likelihood of confusion between the marks in issue. In particular, it considered that there was some visual and phonetic similarity between the signs in issue and that the goods and services covered by the marks in issue were either identical or highly similar. Furthermore, the Board of Appeal made it clear that the Opposition Division’s decision in Case B 966 996 involving the same parties was not directly comparable since that case concerned different marks.
Forms of order sought by the parties
11      The applicant claims that the Court should:
–        alter the contested decision and allow the application for the Community trade mark applied for;
–        in the alternative, annul the contested decision;
–        order OHIM to pay the costs.
12      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
The first plea in law: breach of the principle of equal treatment and infringement of Article 14 of the Convention for the Protection of Human Rights and Fundamental Freedoms
13      The applicant submits that the refusal to register the mark applied for on the basis of its similarity to the earlier (Benelux and international) marks XENTEO even though OHIM had previously rejected the applicant’s opposition, based on its earlier mark Grupo Penteo, to the registration of the international mark XENTEO on account of the dissimilarity of signs, constitutes a breach of the principle of equal treatment. The two OHIM decisions, in those two cases, are wholly contradictory, as there is no relevant difference between the figurative mark Grupo Penteo and the word mark applied for PENTEO.
14      The applicant’s figurative mark is reproduced below:
15      OHIM disputes the applicant’s arguments.
16      It must be noted that, in the context of opposition proceedings, the global assessment of the likelihood of confusion must be based, in so far as the similarity of the signs at issue is concerned, on the overall impression given by the signs, account being taken, inter alia, of their distinctive and dominant elements (Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
17      In the present case, as OHIM correctly noted, the earlier figurative mark includes two additional elements as compared with the mark applied for in this case. The earlier figurative mark includes, firstly, a word element ‘grupo’ and, secondly, a figurative geometric element positioned in front of the word element, which are not included in the mark applied for.
18      Thus, it must be stated that the applicant’s figurative mark Grupo Penteo and word mark PENTEO are not identical. It follows that OHIM’s two decisions do not have the same subject-matter. Therefore, the applicant is wrong to complain that OHIM adopted two wholly contradictory decisions.
19      Moreover, at paragraph 32 of the contested decision, the Board of Appeal made it clear that the Opposition Division’s decision of 8 July 2008 in Case B 966 996 ruling on the opposition of the proprietor of the figurative mark Grupo Penteo to the application for the registration of the word mark XENTEO was not directly comparable. It follows that the applicant’s earlier rights to the mark could not affect the outcome of the present dispute, in particular because of the differences between the marks.
20      Furthermore, it must also be recalled that the principle of equal treatment pleaded by the applicant must be reconciled with the principle of legality. Consequently, no person may rely, in support of a claim, on an unlawful act committed in favour of another in order to obtain an identical decision (see, by analogy, order of 12 February 2009 in Joined Cases C‑39/08 and C-43/08 Bild digital and ZVS, not published in the ECR, paragraph 18). It follows that the applicant could not in any event invoke before OHIM the benefit of a decision-making practice of OHIM which would be contrary to the requirements imposed by Regulation No 207/2009 or which would lead that authority to take an unlawful decision.
21      As regards the possibility of submitting a request for cancellation, raised by OHIM at paragraph 27 of its response, as the applicant correctly pointed out, such a procedure cannot solve the present dispute. As in the case of the invocation of the earlier figurative mark Grupo Penteo, a possible application by the applicant for the cancellation of the international mark XENTEO, so far as the European Union is concerned, is irrelevant in the present case.
22      Nevertheless, it cannot be inferred in any way from the indication of the existence of cancellation proceedings which the applicant could take against the earlier international word mark XENTEO that OHIM acknowledged its error in having rejected the opposition B 966 996 based on the earlier figurative mark Grupo Penteo, as claimed by the applicant in paragraph 9 of its reply.
23      Finally, it must be specified that, in the present case, it is not a question of assessing the similarity between the earlier figurative mark Grupo Penteo and the mark applied for. Thus, the applicant’s arguments relating to the distinctive character of the element ‘penteo’ in the earlier figurative mark or to the generic character of the word ‘grupo’ contained in that mark cannot be accepted.
24      In the light of all the foregoing, the first plea must be rejected.
The second plea in law: infringement of Article 9 of Regulation No 207/2009
25      In the context of its second plea, the applicant claims that the Board of Appeal did not take into account the applicant’s earlier right to register the element ‘penteo’ as a Community mark in so far as that element is contained in the figurative Community mark Grupo Penteo owned by the applicant and registered on 2 September 2004. The rejection of a new application for the registration of an almost identical mark to an earlier Community mark held by the same owner supposes an infringement of Article 9 of Regulation No 207/2009. The fact that it was impossible for the applicant to register the element ‘penteo’, although it had regularly used it as the owner of the Community mark Grupo Penteo, would render Article 9 of Regulation No 207/2009 nugatory and would prevent the applicant from exercising the rights conferred by that article.
26      In support of its plea, the applicant relies on, inter alia, the judgment in Case T‑269/02 PepsiCo v OHIM – Intersnack Knabber-Gebäck (RUFFLES) [2005] ECR II-1341, paragraphs 27 and 28. A contrario, it is apparent from that judgment that, firstly, in the context of opposition proceedings, it must be possible for an earlier Community mark to be relied on as against the mark upon which the opposition is based and, secondly, any dispute between two Community trademarks necessarily falls within OHIM’s competence.
27      Finally, the applicant relies on the case-law concerning the proof of genuine use of an earlier mark within the meaning of Article 15(1)(a) and Article 42(2) and (3) of Regulation No 207/2009 to assert that, after the rejection of the mark applied for, which does not alter the distinctive character of the earlier trademark Grupo Penteo, the applicant would be prevented from freely using the term ‘penteo’.
28      OHIM submits that the present plea is manifestly unfounded.
29      It must be noted that Article 9 of Regulation No 207/2009 defines the scope of the right conferred by a Community trade mark and, therefore, the effects of its registration, but does not concern the conditions for registration. Consequently, Article 9 does not form part of the legal framework to be taken into consideration by OHIM when it examines an application for registration or a notice of opposition (Case T-255/08 Montero Padilla v OHIM – Padilla Requena (JOSE PADILLA) [2010] ECR II–2551, paragraph 28).
30      Thus, as noted by OHIM, Article 9 of Regulation No 207/2009 concerns the rights conferred by a community mark and deals with the exercise of the trade mark right falling with the exclusive jurisdiction of the courts. Consequently, the applicant cannot rely on that provision before the General Court in the context of an action against the administrative decisions of OHIM.
31      In any event, it is the earlier figurative mark Grupo Penteo which, in the applicant’s case, is covered by Article 9 of Regulation No 207/2009. However, as has already been stated in paragraph 19, that mark is not relevant in the present case, since the present dispute is between the word marks XENTEO and the mark applied for PENTEO. Indeed, the applicant exercised the exclusive rights conferred on the figurative mark in the context of the opposition proceedings against the application for registration of the word mark XENTEO. Furthermore, the registration of the mark XENTEO does not prevent the use of the figurative mark Grupo Penteo, contrary to the applicant’s claims.
32      In addition, the case-law relied upon by the applicant and the conclusions it draws from it concern the conditions of use of a mark and not conditions of registration.
33      It follows that the arguments relied on by the applicant are irrelevant. The present plea must therefore be rejected as manifestly unfounded.
The third plea in law: infringement of Articles 75 and 76 of Regulation No 207/2009
34      The applicant complains that the Board of Appeal did not answer the arguments concerning its prior rights. That lack of response gives rise to an infringement of Articles 75 and 76 of Regulation No 207/2009. In that regard, the applicant refers, inter alia, to the judgment in Case T‑323/03 La Baronia de Turis v OHIM – Baron Philippe de Rothschild (LA BARONNIE) [2006] ECR II-2085, paragraphs 58 to 60, 62 and 68. It is apparent from the case-law that, where a decision of the Board of Appeal does not in any way deal with the evidence and facts referred to by the applicant, there is an infringement of Articles 75 and 76 of Regulation No 207/2009. According to the applicant, at paragraph 33 of its response, OHIM admits that the Board of Appeal did not directly examine the arguments concerning the prior rights claimed by the applicant.
35      OHIM disputes the applicant’s arguments.
36      Contrary to the applicant’s claim, concerning an alleged failure to state reasons, it must be noted that the Board of Appeal, at paragraph 32 of the contested decision, took the view that the decision on the opposition brought by the owner of the earlier figurative Community mark Grupo Penteo to the application for registration of the word mark XENTEO, involving the same parties, was not comparable to the present case, since the Opposition Division’s decision concerned the figurative mark which differed, in its overall impression, from the mark applied for in the present case.
37      It must be recalled that, under Article 75 of Regulation No 207/2009, OHIM must state the reasons on which its decisions are based. That obligation has the same scope as that enshrined in Article 296 TFEU and Article 41(2)(c) of the Charter of Fundamental Rights of the European Union. In that regard, the duty to give reasons for individual decisions has two purposes: to allow interested parties to know the justifications for the measure so as to enable them to protect their rights and to enable the Union judicature to exercise its power to review the legality of the decision. Whether a statement of reasons satisfies those requirements is a question to be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (see Joined Cases T-124/02 and T‑156/02 Sunrider v OHIM – Vitakraft-Werke Wührmann and Friesland Brands (VITATASTE and METABALANCE 44) [2004] ECR II-1149, paragraphs 72 and 73 and the case-law cited).
38      However, the Boards of Appeal cannot be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The grounds stated may therefore be implicit, on condition that they enable the persons concerned to know the reasons for which a decision of the Board of Appeal was taken and provide the competent court with sufficient material for it to exercise its power of review. It follows that OHIM is not, as a general rule, required to provide in its decision a specific answer to each argument regarding the existence in other similar cases of decisions of its own at various stages in the procedure, or those of national courts which go in a particular direction, if the reasons for the decision adopted by OHIM in a specific case pending before it at any stage show, at the very least implicitly but clearly and unequivocally, why those other decisions were not relevant or were not taken into consideration in its assessment (Case T-304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II‑1927, paragraph 54).
39      It is necessary to note that, in the present case, the Board of Appeal, at paragraph 32 of the contested decision, set out the facts and the legal considerations which led it to take the contested decision. It not only asserted that the decision relied upon by the applicant was not comparable to the present case, but stated, in addition, that the marks differed in their overall impression. Consequently, it must be declared that the Board of Appeal fulfilled the obligation to state reasons specified in the case-law cited at paragraphs 36 and 37 of the present judgment and did not infringe Article 75 of Regulation No 207/2009.
40      As regards Article 76(2) of Regulation No 207/2009, it must be noted that it concerns the possibility for OHIM of disregarding facts or evidence submitted late by the parties. With the assistance of a reading a contrario, the applicant is attempting to distort the scope of that provision in so far as, according to the applicant, that disposition obliges OHIM to take into account all facts or evidence submitted in due time. However, as has already been pointed out in paragraph 37 of the present judgment, it is Article 75 of Regulation No 207/2009 that imposes an obligation on OHIM to state reasons. Accordingly, the applicant’s argument is misconceived.
41      In respect of LA BARONNIE, as relied on by the applicant, that judgment concerns the principle of continuity of functions between the different bodies of OHIM and in particular, the obligation of the Boards of Appeal to examine the new elements of fact and law which had not been presented to the authorities ruling at first instance. It is, therefore, irrelevant in the present case.
42      Consequently, the present plea must be rejected.
The fourth plea in law: infringement of Article 8(1)(b) of Regulation No 207/2009
43      The applicant claims that the Board of Appeal erroneously applied Article 8(1)(b) of Regulation No 207/2009 in finding that there is a likelihood of confusion between the marks in issue. According to the applicant, there is no relevant similarity between the goods covered by the marks in issue and the marks in issue themselves.
44      OHIM disputes the applicant’s arguments.
45      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 may not 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. Moreover, under Article 8(2)(a)(ii) and (iv) of Regulation No 207/2009, the term ‘earlier trade marks’ is to be understood as meaning trade marks registered in a Member State and trade marks registered under international arrangements which have effect in the European Union, with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
46      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically‑linked undertakings constitutes a likelihood of confusion. According to that same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
47      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
48      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 products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and case-law cited).
49      It is in the light of those principles that the present action must be examined.
The relevant public
50      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 products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see RESPICUR, paragraph 48 above, paragraph 42 and the case-law cited).
51      In the present case, the Board of Appeal took the view, at paragraph 14 of the contested decision, that the relevant public consists of both the public at large as well as the professional business public in the European Union, including the Benelux, since the earlier mark, the subject of an international registration, was initially protected in the Benelux countries. That assessment, which, moreover, the applicant does not deny, must be upheld.
Comparison of goods and services
52      According to settled case-law, in assessing the similarity between the goods or services in question, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited).
53      According to the applicant, the differences between the goods covered by the marks in issue in Class 9 and the services in Class 42 prevent those goods and services from being considered to be similar. Thus, it claims that the ‘magnetic data carriers’ covered by the mark applied for are not analogous to the ‘magnetic cards’ covered by the earlier mark. The latter are intended solely for payment purposes, but are not suitable for the storage and transport of a significant amount of computer information.
54      The ‘data processing equipment and computers’ in Class 9 and covered by the mark applied for are different from ‘equipment for electronic funds transfer, including payment terminals’ covered by the earlier mark. The goods covered by the earlier mark are merely payment terminals which differ from computers.
55      Similarly, the ‘consultancy provided by highly qualified professionals relating to information technology’ in Class 42 and covered by the mark applied for is a service which differs from ‘technical consulting in the field of computing’ which is covered by the earlier mark. The latter services refer to the restricted field of computing whereas the services covered by the mark applied for refer to information technology. Finally, the applicant claims that the domains in which each of the undertakings which are proprietors of trade marks in issue have developed, are very remote.
56      The Board of Appeal found at paragraphs 18 to 24 of the contested decision that the goods and services in issue were identical or highly analogous.
57      It is apparent from settled case-law that where the goods or services covered by the earlier mark include the goods covered by the trade mark application, those goods or services are considered to be identical (see Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 34 and the case-law cited). The same applies where goods or services designated by the earlier mark are included in a more general category, designated by the mark applied for (see, to that effect, Case T-388/00 Institut für Lernsysteme v OHIM − Educational Services (ELS) [2002] ECR II‑4301, paragraph 53 and Case T‑133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR II‑2737, paragraph 29 and the case-law cited).
58      In respect of the similarity of the goods and services disputed by the applicant, it must be noted that the Board of Appeal correctly concluded that the ‘magnetic cards’ carry data about the bearer of the card like the ‘magnetic data carriers’. Similarly, it found that ‘apparatus for recording, transmission or reproduction of sound or images’ includes ‘equipment for electronic funds transfer, including payment terminals’. Finally, the Board of Appeal also took the view that ‘consultancy provided by highly qualified professionals relating to information technology; computer consultancy’ includes ‘technical consulting in the field of computing’. The Board of Appeal was therefore correct to conclude that they are identical.
59      The applicant does not dispute that the other goods and services in issue are identical or similar. Thus, in respect of the goods in Class 9, the ‘recording discs’ covered by the mark applied for were considered to be manifestly identical to ‘magnetic or electronic recording media’ covered by the earlier mark and the ‘apparatus for recording, transmission or reproduction of sound or images’ for the mark applied for were considered to be highly similar to ‘equipment for electronic funds transfer, including payment terminals’. The Board of Appeal also concluded that the services in Class 38, namely the ‘telecommunications’ of the mark applied for and the ‘telecommunications, especially providing access to electronic databases accessible via online networks’ of the earlier mark are identical. Finally, it found, in respect of the services in Class 42, that the ‘computer rental’ of the mark applied for is identical to the ‘rental of computers for electronic transfer of funds’. Its conclusion must be confirmed.
60      It must also be noted that because particular marketing strategies for goods or services covered by the marks can vary over time and depend on the wishes of the proprietors of those marks, the prospective assessment of the likelihood of confusion between two marks cannot be dependent on marketing intentions, whether given effect or not, which are by their very nature subjective for the proprietors of the marks (see judgment of 15 March 2007 in Case C-171/06 P T.I.M.E. ART v OHIM, not published in the ECR, paragraph 59 and Case T‑363/06 Honda Motor Europe v OHIM – Seat (MAGIC SEAT) [2008] ECR II‑2217, paragraph 63). Thus, the use that the applicant intends to make of the mark applied for is irrelevant in the present context. In the context of opposition proceedings, OHIM may take account of the list of goods only as it appears in the trade mark application, subject to any amendments thereto (see judgment of 13 April 2005 in Case T-286/03 Gillette v OHIM – Wilkinson Sword (RIGHT GUARD XTREME sport), not published in the ECR, paragraph 33, and see also, to that effect, Case T-364/05 Saint-Gobain Pam v OHIM – Propamsa (PAM PLUVIAL) [2007] ECR II‑757, paragraph 89). It follows that the applicant’s arguments concerning the differences between the sectors of activity cannot be accepted.
Comparison of the signs
61      The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see OHIM v Shaker, paragraph 35 and the case-law cited).
62      The applicant claims that the signs are not visually, conceptually or phonetically similar. Phonetically, the signs in issue are dominated by two different consonants, that is the first letter of each of the signs, ‘p’ and ‘x’. That difference is also apparent visually. It is the first letter which catches the attention of the public. Finally, in respect of the conceptual comparison, the applicant claims that the element ‘pent’ in the mark applied for refers to the number 5 in most Western languages, while the element ‘xen’ is used as a suffix meaning foreign or strange. Thus, the signs are conceptually different.
63      It must, at the outset, be recalled that, contrary to what is indicated in the reply (paragraph 38 onwards), in the present case the mark applied for PENTEO must be compared with the earlier mark XENTEO. As has already been stated in paragraph 19 of the present judgment, the figurative mark Grupo Penteo belonging to the applicant is not relevant for the purposes of the present case. Consequently, all the arguments alleging a possible similarity or dissimilarity between the marks in issue and the figurative mark Grupo Penteo are irrelevant. It is not a question, in the present case, of seeking whether the mark applied for is or is not similar to the figurative mark belonging to the applicant.
64      As regards the visual comparison, the Board of Appeal found that there is some similarity between the signs in issue.
65      The two signs are made up of six letters of which the last five are identical and appear in the same order. The differences between the signs lie in the first letter, namely, ‘p’ and ‘x’.
66      It must be added that the Board of Appeal noted that the signs in issue differed in their first letter. Indeed, the difference in the first letters was the reason for which it had noted that there is some similarity between the signs in issue and not a high degree of similarity between them.
67      While it is true that the initial part of the word marks may be liable to attract the consumer’s attention more than the following parts (see, to that effect, Joined Cases T-183/02 and T-184/02, El Corte Inglés v OHIM – González Cabello et Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II-965, paragraph 81, and Case T-112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II-949, paragraphs 64 and 65), the difference in the first letters of each sign is not enough to counteract the similarity between the signs in respect of all the other letters making up the majority of the signs in issue. The Board of Appeal was therefore correct in finding that the signs were visually similar.
68      The case-law cited at paragraph 67 of the present judgment also applies to the phonetic comparison of the signs. The Board of Appeal found, at paragraph 27 of the contested decision, that the pronunciation of the three syllables of the signs and the identity of the group of five letters lead to some similarity between those signs.
69      That finding of the Board of Appeal must be approved. The difference in pronunciation as regards the first letter does not counteract the phonetic similarity of the signs.
70      In respect of the conceptual comparison, the Board of Appeal concluded, at paragraph 28 of the contested decision, that the relevant consumer does not attribute a meaning to the signs in issue.
71      The two signs PENTEO and XENTEO have no significance in any of the languages of the European Union. Similarly, as correctly raised by OHIM, the applicant has not proved that the consumer will identify the number 5 ‘penta’ in the mark applied for. Nor did the applicant explain in what way any reference is made to the number 5 in the title of the adult magazine Penthouse. It is also true that the Greek prefix signifying foreign or something foreign is ‘xeno’, however, the earlier mark only contains ‘xen’, so that no reference to ‘foreign’ can be discerned. Consequently, no conceptual comparison of the signs is possible in the present case.
72      So far as it is relevant, it must be pointed out that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (see, to that effect, RESPICUR, paragraph 57, judgement of 13 February 2008 in Case T‑146/06 Sanofi‑Aventis v OHIM – GD Searle (ATURION), not published in the ECR, paragraph 58). It was made clear in Case T‑356/02 Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT) ECR II‑3445, paragraph 51, that it is possible for the relevant consumer to break down a word mark even if only one of the elements making up that mark is familiar to him.
Likelihood of confusion
73      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeisterv OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 74).
74      In the present case, the goods and services covered by the marks in issue are identical or highly similar (see paragraphs 57 and 58 of the present judgment). Similarly, the signs in issue have some visual and phonetic similarity. Finally, a conceptual comparison is not possible in the present case. It follows that the Board of Appeal, at paragraph 30 of the contested decision, correctly found that there is a likelihood of confusion between the signs.
75      The applicant finally claims that the earlier coexistence of the marks on the market could reduce the likelihood of confusion. It cites the case‑law, inter alia, paragraph 86 of the judgment in Case T‑31/03 Grupo Sada v OHIM – Sadia (GRUPO SADA) [2005] ECR II-1667 ‘Of course, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists as between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before OHIM concerning relative grounds of refusal, the applicant for the Community trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical’.
76      It must be noted that the judgment in GRUPO SADA cited by the applicant clearly indicates that, in the case of the coexistence of marks on the market which, in some cases, can reduce the likelihood of confusion, the onus is on the applicant for the mark to duly demonstrate that, because of that coexistence, there is no likelihood of confusion between the marks in issue. However, in the present case, the applicant has not in any way demonstrated such coexistence on the market. Therefore, that line of argument cannot succeed. Furthermore, even if some form of coexistence could be established between the marks in issue, as is apparent from GRUPO SADA, paragraph 86, it would, at the most, be liable to reduce the likelihood of confusion and not counteract it.
77      In the light of the foregoing, the fourth plea in law must be rejected.
78      Since none of the pleas in law put forward by the applicant in support of its application, either for the annulment or the alteration of the contested decision, are well founded, the action must be dismissed in its entirety.
Costs
79      Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
80      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action.
2.      Orders Aitic Penteo, SA to pay the costs.
Czúcz
Labucka
Gratsias
Delivered in open court in Luxembourg on 22 May 2012.
[Signatures]
* Language of the case: English.