ORDER OF THE COURT (Eighth Chamber)

4 March 2010 ( )

(Appeal – Application for registration of Community word mark ARCOL – Opposition by proprietor of Community word mark CAPOL – Implementation by OHIM of a judgment annulling a decision of its Boards of Appeal – Right to be heard – Likelihood of confusion – Minimal degree of similarity of the marks required – Rejection for manifest irrelevance of new evidence adduced before the Board of Appeal – Articles 8(1)(b), 61(2), 63(6), 73, second sentence, and 74(2) of Regulation No 40/94)

In Case C‑193/09 P,

APPEAL under Article 56 of the Statute of the Court of Justice brought on 1 June 2009,

Kaul GmbH, established in Elmshorn (Germany), represented by R. Kunze, Rechtsanwalt and Solicitor,

appellant,

the other parties to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by G. Schneider, acting as Agent,

defendant at first instance,

Bayer AG, established in Leverkusen (Germany),

party to the proceedings before the Board of Appeal of OHIM,

THE COURT (Eighth Chamber),

composed of C. Toader, President of the Chamber, K. Schiemann (Rapporteur) and P. Kūris, Judges,

Advocate General: V. Trstenjak,

Registrar: R. Grass,

after hearing the Advocate General,

makes the following

Order

1 By its appeal, Kaul GmbH (‘Kaul’) asks the Court to set aside the judgment of the Court of First Instance of the European Communities (now ‘the General Court’) of 25 March 2009 in Case T‑402/07 Kaul v OHIM – Bayer (ARCOL) (not yet published in the ECR, ‘the judgment under appeal’), which dismissed its action brought against the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 1 August 2007 rejecting its opposition to the registration as a Community trade mark of the word sign ‘ARCOL’ (‘the contested decision’).

Legal context

Regulation (EC) No 40/94

2 Article 8(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) provides:

‘Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

...

(b) if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the 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.’

3 Article 61(2) of that regulation provides:

‘In the examination of the appeal, the Board of Appeal shall invite the parties, as often as necessary, to file observations, within a period to be fixed by the Board of Appeal, on communications from the other parties or issued by itself.’

4 Article 63(6) of that regulation provides:

‘[OHIM] shall be required to take the necessary measures to comply with the judgment of the Court of Justice.’

5 Article 73 of that regulation provides:

‘Decisions of [OHIM] shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had on opportunity to present their comments.’

6 Article 74(2) of Regulation No 40/94 provides:

‘[OHIM] may disregard facts or evidence which are not submitted in due time by the parties concerned.’

Backgound to the dispute

7 On 3 April 1996, Atlantic Richfield Co. submitted to OHIM an application to register the word sign ‘ARCOL’ as a Community trade mark for, inter alia, ‘chemical substances for preserving foodstuffs’ within Class 1 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.

8 On 20 October 1998, Kaul filed an opposition against the registration of that word sign as a trade mark. The opposition was based on the existence of an earlier Community trade mark comprising the sign ‘CAPOL’, registered on 24 February 1998 and relating to goods described as ‘chemical preparations for keeping fresh and preserving foodstuffs, namely raw materials for smoothing and preserving prepared food products, in particular confectionery’, also within Class 1. In support of its opposition, Kaul relied on the ground for refusal set out in Article 8(1)(b) of Regulation No 40/94

9 By decision of 30 June 2000, OHIM’s Opposition Division rejected the opposition on the ground that, even assuming identity of goods, there could be no likelihood of confusion between the opposing signs owing to their visual and phonetic differences.

10 On 24 July 2000, Kaul filed an appeal against the decision of the Opposition Division in support of which it argued, in particular, as it had argued before the Opposition Division, that the earlier mark had a highly distinctive character and therefore, under the case-law, it should have benefited from increased protection. In this connection, Kaul none the less claimed that its highly distinctive character was attributable not only to the fact that the term ‘CAPOL’ was not descriptive for the goods in question, as it had already submitted before the Opposition Division, but also to the fact that that mark had become well known through use. In order to substantiate its well-known character, Kaul produced, in the annex to its written statement before the Board of Appeal, an affidavit by its managing director, and a list of its customers.

11 The transfer of the application for registration of the mark ‘ARCOL’ to Bayer AG was entered in the Register of Community trade marks on 17 November 2000.

12 By decision of 4 March 2002 (‘the 2002 decision’), the Third Board of Appeal of OHIM dismissed Kaul’s appeal. The Board found that the goods covered by the mark applied for and the earlier trade mark were identical and, having compared the two signs from a visual, phonetic and conceptual standpoint, then carried out a global assessment of the likelihood of confusion, in the course of which it found, inter alia, that it could not take into account the supposedly highly distinctive character of the earlier mark, linked to the fact that it was well known, since that factor and the evidence mentioned above seeking to substantiate it were introduced for the first time in support of the appeal brought before it.

13 On 24 May 2002, Kaul brought an action against the 2002 decision before the General Court. In support of its action, it relied in particular on a plea of infringement by the Board of Appeal of the obligation to examine the evidence adduced by it before the Board.

14 By judgment in Case T‑164/02 Kaul v OHIM – Bayer (ARCOL) [2004] ECR II‑3807, the General Court accepted that plea and annulled the 2002 decision on that basis. In essence, the Court considered that, in the 2002 decision, the Third Board of Appeal had infringed Article 74 of Regulation No 40/94 by refusing to consider the factual evidence adduced by the appellant for the first time before it. According to the Court, since that evidence was produced in the annex to the pleadings filed by Kaul before the Board of Appeal within the four‑month period laid down for this purpose, it was in fact produced in due time and the Board of Appeal was, therefore, required to take the evidence into account.

15 On 25 January 2005, OHIM lodged an appeal against the judgment of the General Court before the Court of Justice.

16 By its judgment in Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, the Court of Justice allowed the appeal and set aside the judgment in Case T‑164/02 Kaul v OHIM – Bayer (ARCOL). Then, giving final judgment in the case itself, the Court of Justice annulled the 2002 decision.

17 The Court of Justice found that the Third Board of Appeal had refused, in the 2002 decision, to take into account the facts and evidence submitted by the appellant in support of its appeal, by holding, essentially, that the taking into account of such information was automatically precluded since those facts and that evidence had not been submitted earlier before the Opposition Division within the time‑limit set by that division. The Court held that that reasoning infringes Article 74(2) of Regulation No 40/94, which grants the Board of Appeal, when presented with facts or evidence which are submitted late, a discretion as to whether or not to take account of such information when making the decision which it is called upon to give. Since, instead of exercising the discretion which it thus had, the Third Board of Appeal had wrongly considered itself to be lacking any discretion as to whether or not to take account of the facts and evidence at issue, the Court annulled the 2002 decision.

18 By decision of 19 June 2007, notified to the parties to the proceedings before OHIM on 22 June 2007, the Presidium of the Boards of Appeal of OHIM reallocated the case to the Second Board of Appeal.

19 On 1 August 2007, the Second Board of Appeal of OHIM adopted the contested decision, notified to Kaul on 6 September 2007, by which it dismissed the appellant’s appeal and upheld the decision of the Opposition Division which had rejected Kaul’s opposition. In essence, the Second Board of Appeal, after finding that the marks at issue could not in any way be regarded as similar by the relevant public, made up of manufacturers of food and confectionery products, came to the conclusion that one of the conditions for the application of Article 8(1)(b) of Regulation No 40/94 was not satisfied and that the Opposition Division had been correct to reject the opposition. In the light of that conclusion, the Second Board of Appeal found that the facts and evidence presented by Kaul for the first time before the Board of Appeal at the appeal stage, in support of its argument that the earlier mark had acquired a highly distinctive character resulting from its use on the market, were irrelevant, because such an argument, even if it were proved, could not have any bearing on the application of Article 8(1)(b) of Regulation No 40/94 in the present case, and that it should therefore be disregarded.

The proceedings before the General Court and the judgment under appeal

20 By application lodged at the Registry of the General Court on 6 November 2007, Kaul brought an action against the contested decision.

21 In support of that action, it relied on three pleas in law, namely, first, infringement of Articles 63(6) and 74(2) of Regulation No 40/94; secondly, infringement of the right to be heard, as enshrined, inter alia, in Articles 61(2) and 73, second sentence, of that regulation; and, thirdly, infringement of Article 8(1)(b) of that regulation.

22 In support of its first plea, Kaul argued that the Board of Appeal had disregarded the operative part and reasoning of OHIM v Kaul, in that it had not, or had not properly, exercised the discretion conferred on it by Article 74(2) of Regulation No 40/94 as to whether or not to take account of the facts and evidence not previously adduced before the Opposition Division.

23 In dismissing this plea, the General Court, as a preliminary matter, held as follows at paragraphs 21, 23 and 24 of the judgment under appeal:

‘21 According to settled case-law, a judgment annulling a measure, such as OHIM v Kaul, cited … above, takes effect ex tunc and thus has the effect of retroactively eliminating the annulled measure from the legal system …

23 In the present case, following annulment of the 2002 decision, the appeal brought by the applicant before the Board of Appeal again became pending. In order to comply with its obligation under Article 63(6) of Regulation No 40/94 to take the measures necessary to comply with the Court’s judgment, OHIM had to ensure that the appeal led to a new decision of a Board of Appeal. That was indeed what occurred because the case was reallocated to the Second Board of Appeal, which adopted the contested decision.

24 The applicant does not contest the lawfulness of the reallocation of the case to the Second Board of Appeal. It nevertheless argues that the latter confined itself to declaring that the 2002 decision was well founded and that the facts and evidence which the applicant had submitted for the first time at the appeal stage before the Board of Appeal were irrelevant and, therefore, inadmissible, without exercising its discretion under Article 74(2) of Regulation No 40/94 to decide whether or not to take those facts and evidence into account.’

24 Next, the General Court pointed to various principles from the case-law with regard to the notion of the likelihood of confusion referred to in Article 8(1)(b) of Regulation No 40/94. Thus it stated as follows at paragraphs 26 to 29 of the judgment under appeal:

‘26 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, 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 perception which the relevant public has of the signs and the goods or services in question, taking into account all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods and services covered (order of the Court of Justice of 24 April 2007 in Case C‑131/06 P Castellblanch v OHIM, not published in the ECR, paragraph 55; 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).

27 In addition, the more distinctive the earlier mark, the greater will be the likelihood of confusion. Therefore, marks with a highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character. The distinctive character of the earlier trade mark, and in particular its reputation, must therefore be taken into account when assessing whether there exists a likelihood of confusion (see judgment of 17 April 2008 in Case C‑108/07 P Ferrero Deutschland v OHMI and Cornu, not published in the ECR, paragraphs 32 and 33 and the case-law cited).

28 While it is the case that, under the principle of the interdependence between the factors taken into account in a global assessment of the likelihood of confusion, and in particular between the similarity of the trade marks and that of the goods or services covered, 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 (judgment of 15 March 2007 in Case C‑171/06 P T.I.M.E. ART v OHIM, not published in the ECR, paragraph 35), the Court of Justice has held that, for the purposes of applying Article 8(1)(b) of Regulation No 40/94, the likelihood of confusion presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services covered in the application for registration are identical or similar to those in respect of which the earlier mark was registered. Those conditions are cumulative (Case C‑106/03 P Vedial v OHIM [2004] ECR I‑9573, paragraph 51, and Case C‑234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I‑7333, paragraph 48).

29 It follows that, where the goods or the services covered by the trade marks at issue are identical, if those trade marks, considered individually, do not display the minimum degree of similarity required for it to be possible to establish a likelihood of confusion solely on the basis of the highly distinctive character of the earlier mark or solely because the goods or services covered by the earlier marks and those covered by the trade mark applied for are identical, the opposition must be rejected, without the principle of interdependence in the global assessment of the likelihood of confusion precluding such a result (see Il Ponte Finanziaria v OHIM, paragraphs 50 and 51).’

25 Finally, with regard to the contested decision, the General Court held inter alia as follows at paragraphs 33 and 34 and 40 to 45 of the judgment under appeal:

‘33 The Second Board of Appeal, to which the case was reallocated following the annulment of the 2002 decision, dismissed, after re‑examination, the applicant’s appeal against the decision of the Opposition Division, on the ground that the earlier mark and the mark applied for could not in any way be regarded as identical or similar by the relevant public and that, therefore, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 in the instant case (paragraphs 26 to 28 of the contested decision).

34 Without prejudice to the examination of the conclusion of the Second Board of Appeal with regard to the absence of any similarity between the marks at issue, a conclusion which the applicant contests in its third plea in law examined below, it must be held that, in dismissing the applicant’s appeal against the decision of the Opposition Division and confirming that decision on the ground that the marks at issue were not identical or similar, the Second Board of Appeal correctly applied the case-law referred to in paragraph 28 above, to which it also refers in paragraph 26 of the contested decision.

…

40 Taking into account its conclusion that the marks at issue were not in any way similar, the Second Board of Appeal found, in paragraph 25 of the contested decision, that the facts and evidence concerning the supposed well-known character of the earlier mark, submitted by the applicant for the first time at the appeal stage before the Board of Appeal “[were] irrelevant to the outcome of the opposition and so [were] inadmissible since, even if the facts alleged were fully proved, it could not have any bearing on the application of Article 8(1)(b) of [Regulation No 40/94] in this case”.

41 The appellant claims that, by thus refusing to take into account those facts and evidence, the Second Board of Appeal infringed Article 74(2) of Regulation No 40/94, as interpreted by the judgment in OHIM v Kaul …

42 The relevance of the facts and evidence submitted to OHIM by the parties to opposition proceedings outside the time-limits prescribed for that purpose constitutes one of the criteria which OHIM must take into account in order to decide, when exercising its discretion under Article 74(2) of Regulation No 40/94, whether or not to take account of such facts and evidence (see, to that effect, OHIM v Kaul, … paragraph 44).

43 Consequently, the Second Board of Appeal cannot be accused of infringing the latter provision and disregarding OHIM v Kaul, … when, in deciding to ignore the facts and evidence submitted by the applicant for the first time at the stage of its appeal against the decision of the Opposition Division, it took into account the complete lack of relevance of such facts and evidence for the resolution of the case.

44 In any case, the applicant’s complaint relating to the alleged infringement of Article 74(2) of Regulation No 40/94 is irrelevant. Having found that there was no similarity between the mark applied for and the earlier mark, the Second Board of Appeal was not bound to take into consideration the supposed well-known character of the earlier mark, since it was properly entitled to conclude that there was no likelihood of confusion, whatever the supposed especially distinctive character of the earlier mark (see, to that effect, judgment of 25 June 2008 in Case T‑224/06 Otto v OHIM – L’Altra Moda (l’Altra Moda), not published in the ECR, paragraph 50).

45 Consequently, even if the refusal of the Second Board of Appeal to take into consideration, in the exercise of its discretion deriving from Article 74(2) of Regulation No 40/94, the supposed well‑known character of the earlier mark and the evidence supporting that was an error of law, such an error had no effect on the operative part of the contested decision, which was properly based, in law, on the conclusion that the mark applied for and the earlier mark are neither identical nor similar.’

26 In dismissing the second plea, alleging infringement of Articles 61(2) and 73, second sentence, of Regulation No 40/94, on the basis that the Board of Appeal had not given Kaul an opportunity to submit its observations before adopting the contested decision, particularly with regard to the scope and consequences of the judgment in OHIM v Kaul, the General Court held, inter alia, as follows at paragraphs 55 and 56, 59 to 61, 64 and 65 of the judgment under appeal:

‘55 It should be noted that, under the second sentence of Article 73 of Regulation No 40/94, the decisions of OHIM may be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. The general principle of protection of the right to defend oneself is enshrined in the law of Community trade marks by that provision. According to that general principle of Community law, a person whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make his point of view known. The right to be heard extends to all the matters of fact or of law which form the basis of the decision, but not to the final position which the authority intends to adopt (see Case T‑317/05 Kustom Musical Amplification v OHIM (Shape of a guitar) [2007] ECR II‑427, paragraphs 24, 26 and 27 and the case-law cited).

56 In the present case, it is common ground that, in the course of the proceedings which led to the adoption of the 2002 decision, the applicant had the opportunity to submit, before the Third Board of Appeal, its observations relating to all aspects of its opposition, including the supposedly similar character of the marks at issue. A summary of those observations is in fact contained in paragraph 6 of the 2002 decision.

…

59 There is no indication at all in the contested decision that the Second Board of Appeal, when it adopted that decision, relied on matters of law or of fact different from those available to the Third Board of Appeal when it adopted the 2002 decision and on which the applicant had been able to submit observations. That is made all the more evident by the fact that the Second Board of Appeal largely reproduced the reasoning of the 2002 decision concerning the visual, phonetic and conceptual comparison of the signs at issue.

60 While it is, admittedly, correct that the Second Board of Appeal drew from the reasoning of the 2002 decision, reproduced in its own decision, a conclusion concerning the lack of similarity between the two marks at issue, which was not, as such, contained in the 2002 decision, the fact remains that, with regard to the final position that the Second Board of Appeal intended to adopt, the latter was not in any way bound, in the light of the case-law referred to in paragraph 55 above, to hear the applicant again before adopting its decision.

61 The applicant nevertheless claims, essentially, that the judgment in OHIM v Kaul … was a new legal issue on which it should have been heard, before the contested decision was adopted.

…

64 With regard to the question whether, before adoption of the contested decision, the Second Board of Appeal should have heard the applicant again concerning the application of Article 74(2) of Regulation No 40/94, following the clarification as to the interpretation and application of that provision given by the judgment in OHIM v Kaul, … it suffices to recall that, even if the refusal of the Second Board of Appeal to take into consideration, in the exercise of its discretion deriving from Article 74(2) of Regulation No 40/94, the facts and evidence concerning the supposedly well-known character of the earlier mark was vitiated by an error of law, such an error would have no bearing on the solution adopted in the contested decision.

65 Since, according to the case-law referred to in paragraph 55 above, the right to be heard under Article 73 of Regulation No 40/94 extends, in particular, to the matters of law which form the basis of the decision, the Second Board of Appeal was not bound to hear the applicant on the application of Article 74(2) of Regulation No 40/94, since the facts and evidence concerning the well-known character of the earlier mark, relied on on the basis of that provision, were not part of the basis of the contested decision.’

27 In rejecting the third plea, alleging infringement of Article 8(1)(b) of Regulation No 40/94, the General Court held, inter alia, as follows at paragraphs 71 and 72, 74 to 80, 83 to 85, and 97 to 100 of the judgment under appeal:

‘71 As a preliminary point, the complaints of the applicant alleging that the Board of Appeal disregarded, first, the case-law relating to the enhanced protection enjoyed by marks with a highly distinctive character and, second, the interdependence of the different criteria to be taken into consideration in the global assessment of the likelihood of confusion, must be rejected as irrelevant.

72 As noted in the examination of the first plea, the rejection of the opposition in this case was based on the absence of any similarity between the marks at issue and not on a global assessment of the likelihood of confusion.

…

74 With regard to the complaint alleging disregard by the Board of Appeal of the “function of trade mark protection”, it should be pointed out that the applicant claims in that context that, apart from its function as an indicator of the commercial origin and of the quality of the goods or services and as an advertising tool, a trade mark also fulfils a competitive function by securing a competitive advantage for the proprietor.

75 These arguments, even if correct, are not in any way capable of affecting the assessment as to whether the two marks are similar. That complaint is therefore also irrelevant.

76 With regard to the complaint alleging erroneous definition of the relevant public, to be taken into account in the assessment of the likelihood of confusion in the present case, the applicant does not contest the conclusion of the 2002 decision, reproduced in the contested decision, according to which that public is made up of producers of food and confectionery products. It challenges, rather, the assertions, made in paragraph 34 of the 2002 decision and reproduced in paragraph 23 of the contested decision, that the choice, by the specialised public concerned, of one or other of the types of goods covered by the marks at issue “will only minimally be affected or influenced by the marking accompanying the products and ingredients [it] uses in [its] manufacturing concerns” and, “[i]n this type of situation, before a finding of a likelihood of confusion can be arrived at there must be a high degree of similarity between the marks”.

77 That is a complaint that is therefore also irrelevant. There is no need to determine what degree of similarity of the marks at issue would, in the present case, be enough to result in a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, it being sufficient to point out that the Board of Appeal concluded that those marks were not at all similar.

78 It suffices, therefore, in order to respond to this plea in law, to examine that latter conclusion in the contested decision, taking into account, first, the perception of the marks at issue by the public referred to above, which was correctly identified by the Board of Appeal in the contested decision, and second, the applicant’s argument regarding the alleged errors committed by the Board of Appeal in the visual and phonetic comparison of those marks.

79 In paragraph 27 of the 2002 decision, reproduced in paragraph 23 of the contested decision, the Board of Appeal first carried out a visual comparison of the two marks at issue. In that regard, the Board of Appeal pointed out that the fact that those marks both consisted of five letters was no more than a “likely coincidence”. In addition, it added that, although those marks shared the letter “a” and the ending “ol”, they “clearly differ[ed]” visually.

80 The applicant contests those considerations, which it regards as empty and meaningless. …

…

83 What matters in the assessment of the visual similarity of two word marks is, rather, the presence, in each of them, of several letters in the same order. Thus, the Board of Appeal rightly did not attach particular importance to the presence, in the two marks at issue, of the letter “a”, that being the first letter in the mark applied for, followed by the letters “rc”, whereas it is the second letter in the earlier mark, situated between two different letters, namely “c” and “p”.

84 By contrast, the ending “ol” of the marks at issue constitutes, as the Board of Appeal accepted, a common element of the marks. However, since that group of letters comes at the end of those marks and is preceded, in each, by completely different groups of letters (respectively, “arc” and “cap”), the Board of Appeal concluded, correctly, that that ending was not capable of calling into question the conclusion that those marks, considered as a whole, were not visually similar.

85 That is all the more true because, as the [General Court] has repeatedly held, the consumer generally pays greater attention to the beginning of a mark than to the end (see Case T‑133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR II‑2737, paragraph 51, and l’Altra Moda, … at paragraph 43).

…

97 The applicant’s complaint relating to the disregard, by the Board of Appeal, of the position supposedly adopted by the OHIM representative during the proceedings before the Community Courts must also be rejected.

98 Decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal are called on to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the question whether a sign may be registered as a Community trade mark must be assessed solely on the basis of that regulation, as interpreted by the Community Courts, and not on the basis of a previous practice of OHIM (see Case T‑304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II‑1927, paragraph 45 and the case-law cited).

99 Those considerations are all the more valid as regards a declaration supposedly made by the OHIM representative before the Community Courts, particularly because, in the light of the independence of the President and members of the Boards of Appeal of OHIM, laid down in Article 131(4) of Regulation No 40/94, they are not bound by the position adopted by OHIM in a dispute before the Community Courts.

100 Consequently, even if the OHIM representative did in fact make the declaration alleged by the applicant, the Board of Appeal was not bound by it and did not have to explain, in the contested decision, the grounds on which it disregarded it.’

Forms of order sought by the parties before the Court of Justice

28 Kaul claims that the Court should set aside the judgment under appeal and order OHIM to pay the costs.

29 OHIM contends that the Court should dismiss the appeal and order Kaul to pay the costs.

Appeal

30 Under Article 119 of its Rules of Procedure, where the appeal is, in whole or in part, clearly inadmissible or clearly unfounded, the Court may, at any time, acting on a report from the Judge-Rapporteur, and after hearing the Advocate General, by reasoned order dismiss the appeal.

31 In support of its appeal, the appellant raises three grounds of appeal, namely infringement of Article 74(2) of Regulation No 40/94, infringement of the right to be heard and infringement of Article 8(1)(b) of that regulation.

First ground of appeal: infringement of Article 74(2) of Regulation No 40/94

Arguments of the parties

32 By its first ground of appeal, Kaul submits that the General Court confirmed, at paragraph 47 of the judgment under appeal, that the Second Board of Appeal had not complied with Article 74(2) of Regulation No 40/94 in failing to exercise the discretion conferred on it by that provision when documents are adduced for the first time when the appeal was brought before the Board of Appeal. The Second Board of Appeal infringed that provision by rejecting the documents in question as inadmissible without any explanation as to the reason why it was refusing to take them into account. In doing so, it also disregarded OHIM v Kaul, by failing to undertake a new, comprehensive examination of the substance of the opposition, both in fact and in law.

33 However, Kaul criticises the General Court for then having held, in paragraph 47 of the judgment under appeal, that such infringement of Article 74(2) could in the present case be remedied by the fact that, even if the Board of Appeal had taken into account the evidence adduced to support the argument that the earlier mark enjoyed increased distinctive character, the operative part of the contested decision would have remained identical, owing to the fact that the absence of any similarity between the opposing marks found by that Board of Appeal was sufficient in this case to exclude any likelihood of confusion.

34 In so holding, the General Court first of all disregarded the fact that the infringement of Article 74(2) by the Second Board of Appeal was an absolute error of law which could not be remedied by means of such a purely speculative presumption.

35 Secondly, the General Court also erred in law by accepting that a simple examination of the similarity between the opposing marks could give rise to a finding that there was no likelihood of confusion. According to Kaul, that approach in fact disregards the requirement that, in assessing whether or not there is a likelihood of confusion, account must always be taken of the interdependence between the various relevant criteria and, more particularly, of the principle that a lesser degree of similarity of the opposing marks may be offset by increased distinctiveness of the earlier mark.

36 In Kaul’s submission, as a consequence of the second error in law, the investments made in a trade mark and the recognition it enjoys are no longer taken into consideration or protected against infringement, although the marks none the less benefit from the protection enshrined in Protocol No 1 to the European Convention for the Protection of Human Rights and Fundamental Freedoms signed at Rome on 4 November 1950.

37 OHIM challenges this reasoning.

Findings of the Court

38 It should be noted at the outset that it is clear from the arguments in paragraphs 40 to 43 of the judgment under appeal that, contrary to Kaul’s contention, which takes paragraph 44 of the judgment – wrongly identified by it as paragraph 47 – out of context, the General Court in no sense held that the Board of Appeal had failed to exercise the discretion conferred on it by Article 74(2) of Regulation No 40/94. On the contrary, in paragraphs 40 to 43, the General Court found that, by declaring the new evidence adduced by Kaul at the stage of the appeal before the Board of Appeal inadmissible on the ground that it was irrelevant to the decision it was called upon to make, the Second Board of Appeal had correctly applied Article 74(2) as interpreted by the judgment in OHIM v Kaul.

39 It is also necessary to point out that the General Court was correct to observe, at paragraph 42 of the judgment under appeal, that the manifest irrelevance of the facts and evidence submitted to OHIM by the parties to opposition proceedings, outside the time-limits prescribed for that purpose, is precisely one of the criteria which OHIM may take into account in deciding, in the exercise of the discretion which it enjoys under Article 74(2) of Regulation No 40/94, that there is no need to take account of these facts and evidence, as is clear, in particular, from paragraphs 43 and 44 of OHIM v Kaul.

40 It follows that the finding of the General Court at paragraph 44 of the judgment under appeal – that even if an infringement of Article 74(2) of Regulation No 40/94 were proved, that fact could not have caused the contested decision to be annulled – is a subsidiary consideration in the reasoning which led that Court to reject the appellant’s plea alleging infringement of that provision.

41 In those circumstances, the first limb of the first ground of appeal, in which Kaul criticises the General Court for having held that an infringement of Article 74(2) of Regulation No 40/94 could be remedied by the fact that it had no consequences for the outcome of the decision finally adopted by the Board of Appeal, must be dismissed as manifestly inoperative.

42 The second limb of that ground of appeal alleging that the General Court erred in law in holding that an opposition based on Article 8(1)(b) of Regulation No 40/94 could, in some cases, be rejected on the basis of a simple examination of the similarity of the marks and, therefore, in particular, without examining the alleged highly distinctive character of the earlier mark, is, for its part, manifestly unfounded.

43 In this respect, it is sufficient to observe, as the General Court essentially did at paragraph 28 of the judgment under appeal, that it is clear from the case-law that for the purposes of applying Article 8(1)(b) of Regulation No 40/94 a likelihood of confusion presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services covered in the application for registration are identical or similar to those in respect of which the earlier mark was registered, and that these conditions are cumulative (see Vedial v OHIM, paragraph 51, and Il Ponte Finanziaria v OHIM, paragraph 48).

44 The General Court was also right to observe, in this connection, at paragraph 29 of the judgment under appeal, that when it is found that two opposing marks, considered individually, do not display the minimum degree of similarity required for it to be possible to establish a likelihood of confusion solely on the basis of the highly distinctive character of the earlier mark or solely because the goods covered by the earlier mark and those covered by the trade mark applied for are identical, the opposition must be rejected, and this is not precluded by the principle of interdependence (see, to that effect, Il Ponte Finanziaria v OHIM, paragraph 50).

45 Nor, therefore, did the General Court err in law in finding, at paragraphs 33 and 34 of the judgment under appeal, that, when the Second Board of Appeal had reached the conclusion that the marks at issue could in no way be regarded as similar by the relevant public, the Board was entitled under the case-law mentioned above to infer that there was no likelihood of confusion, without having first to apply the principle of interdependence and, in particular, to examine the possible highly distinctive character of the earlier mark in the course of an overall assessment of the likelihood of confusion (see, to that effect, Il Ponte Finanziaria v OHIM, paragraph 51).

46 As to the appellant’s argument that such an interpretation of Article 8(1)(b) of Regulation No 40/94 would be likely to reduce the protection of investments in a mark and the recognition it enjoys, it is clear that that argument does not meet the conditions for the admissibility of a ground of appeal.

47 Indeed, it is clear from Article 225 EC, Article 58, first paragraph, of the Statute of the Court of Justice, and Article 112(1)(c) of the Rules of Procedure that an appeal must indicate precisely the contested elements of the judgment which the appellant seeks to have set aside, and also the legal arguments specifically advanced in support of the appeal (see, inter alia, order in Case C‑488/01 P Martinez v Parliament [2003] ECR I‑13355, paragraph 40 and case-law cited).

48 The appellant’s argument in the present case contains no legal reasoning to demonstrate how the General Court erred in law on this point. In particular, the appellant does not even attempt, in its appeal, to criticise the grounds on the basis of which the Court, in paragraphs 74 and 75 of the judgment under appeal, dismissed the arguments it had presented in this connection at first instance (see, to that effect, inter alia, order in Martinez v Parliament, paragraph 41, and Il Ponte Finanziaria v OHIM, paragraph 45).

49 It follows from all of the foregoing that the first ground of appeal must be rejected as in part manifestly unfounded and in part manifestly inadmissible.

Second ground of appeal: infringement of the right to be heard and of Articles 61(2), 63 and 73 of Regulation No 40/94

Arguments of the parties

50 By its second ground of appeal, the appellant submits that, by failing to invite it to submit its observations on the issues addressed in OHIM v Kaul, and on the observations made by the parties in the context of the proceedings which gave rise to the judgment in Case T‑164/02 Kaul v OHIM – Bayer (ARCOL), and by the General Court itself in that judgment, the Second Board of Appeal infringed its right to be heard. Therefore, in dismissing the second plea, alleging infringement of Articles 61(2), 63 and 73 of Regulation No 40/94, the General Court, in turn, disregarded those provisions.

51 According to Kaul, following the annulment by the Court of Justice of the 2002 decision, the procedure before the Board of Appeal was restored to its initial status, that is to say the stage prior to the filing of the form giving notice of appeal and to the submission of the statement of grounds of appeal, so that the Second Board of Appeal was bound, inter alia, in accordance with Article 61(2) of Regulation No 40/94, to invite the parties, as often as necessary, and, in this case at least once, to file their observations.

52 The statement of the General Court claiming to justify a posteriori the failure to invite the parties to file their observations, based on the fact that they had already had an opportunity to file their observations during the proceedings pending before the Third Board of Appeal, is speculative and infringes both the rule that proceedings have to be reheard before the Board of Appeal and also Kaul’s right to be heard.

53 OHIM contends that the right to be heard enshrined in Article 73, second sentence, of Regulation No 40/94 was in fact observed in this case. In finding that the alleged reputation of the earlier mark could not, in this case, alter the overall assessment of the likelihood of confusion, the Second Board of Appeal remained within the same framework, as to both the law – in this case Article 8(1)(b) of Regulation No 40/94 – and the facts, as that within which the Opposition Division and the Third Board of Appeal made their findings. However, Kaul had, and indeed made full use of, the opportunity to put forward its view on the global assessment of the likelihood of confusion, and in particular on the allegedly higher distinctive character of its trade mark, both during the proceedings before the Third Board of Appeal and before the Community Courts.

54 With regard to Kaul’s argument criticising the judgment under appeal for having failed to acknowledge that it ought to have been able to submit observations on OHIM v Kaul, OHIM contends, with regard to Article 63(6) of Regulation No 40/94, that it is for OHIM alone to draw the consequences resulting from the judgment of the Court of Justice and to adopt the necessary measures in this regard. Any invitation to the parties to file observations on this matter would thus be a mere matter of ‘procedural politeness’ and would not in any circumstances be mandatory under Article 73 of the regulation.

Findings of the Court

55 In paragraph 23 of the judgment under appeal, the General Court found that, following the annulment by the Court of Justice of the 2002 decision, the appellant’s appeal had become pending again and, in order to comply with its obligation under Article 63(6), OHIM had to ensure that the appeal resulted in a new decision by a Board of Appeal. The General Court found, in this connection, that that was indeed what had occurred because the case had been reallocated to the Second Board of Appeal, which had then adopted the contested decision.

56 Without challenging this assessment on the part of the General Court, Kaul none the less argues that Articles 63(6), 61(2) and 73, second sentence, of Regulation No 40/94 required the Board of Appeal to which the case had thus been reallocated to allow it an opportunity to file its observations, and that the General Court erred in law in ruling that that was not so.

57 However, none of the arguments advanced by Kaul in this regard is persuasive.

58 In fact, the General Court was right to recall at paragraph 55 of the judgment under appeal that Article 73, second sentence, of Regulation No 40/94, according to which decisions of OHIM may be based only on reasons or evidence on which the parties concerned have had on opportunity to present their comments, establishes, in the context of Community trade mark law, the general principle of protection of the right to defend oneself, under which a person whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make his point of view known.

59 It also found, at paragraph 56 of the judgment, that, in this case, it was common ground that in the course of the proceedings which led to the adoption of the 2002 decision the appellant had had the opportunity to present, before the Third Board of Appeal, its observations on all aspects of its opposition, including the supposed similarity of the opposing marks. The General Court further pointed out, at paragraph 59 of the judgment that there was no indication in the contested decision that, when the Second Board of Appeal adopted the decision, it relied on matters of law or of fact different from those available to the Third Board of Appeal when it adopted the 2002 decision, and on which the appellant had been able to submit observations.

60 In the light of its findings, it is clear that the General Court was properly entitled to conclude, without erring in law, that Article 73, second sentence, of Regulation No 40/94 in no way required that, following the resumption of the proceedings before OHIM after the annulment of the 2002 decision, the appellant again be invited to file observations on points of law and fact on which it had already had ample opportunity to express its views in the course of the written procedure previously conducted before the Third Board of Appeal, given that the file as then constituted was taken over by the Second Board of Appeal.

61 Nor, further, can it usefully be argued, in the light of those findings, that the Board of Appeal disregarded Article 61(2) of Regulation No 40/94, which provides that the Board is to invite the parties as often as necessary to file observations on communications issued by itself or from the other parties.

62 Contrary to the appellant’s contention, Article 73, second sentence, and Article 61(2) of Regulation No 40/94 did not, any more than Article 63(6), require that the appellant be heard on the consequences to be drawn from the judgment in OHIM v Kaul.

63 In fact, it must be observed that, in that judgment, the Court of Justice merely annulled the 2002 decision on the ground that the Third Board of Appeal had wrongly considered itself to be legally precluded from taking into account all facts and evidence adduced for the first time by an applicant in support of its appeal before a Board of Appeal, and that consequently it had failed to exercise its discretion in that regard under Article 74(2) of Regulation No 40/94 and to give reasons for its decision on that point.

64 In order to remedy the error of law censured by the Court of Justice, it was therefore essentially incumbent on the Board of Appeal to exercise its discretion as to whether to take account of the evidence, to give reasons for its decision, and to rule again on the appeal before it.

65 As has already been stated at paragraphs 38 and 39 of this order, the General Court was properly entitled to find that the Board of Appeal had fulfilled that obligation.

66 In addition, it is plain that neither the correct implementation of the judgment, nor the right to be heard enshrined in Article 73(2) of Regulation No 40/94, required that before the Second Board of Appeal, in the exercise of its discretion under Article 74(2) of Regulation No 40/94, excluded the evidence thus submitted by Kaul on the basis of its total irrelevance to the decision it was called upon to make, it had to offer Kaul a further opportunity to comment on that evidence. It must also be noted that a party which, like Kaul in the present case, itself submitted the facts and evidence in question was by definition in a position to state their possible relevance to the resolution of the dispute at the time when it submitted them.

67 Nor can it be argued in those circumstances that the Board of Appeal disregarded Article 61(2) of Regulation No 40/94, which requires it to invite the parties to submit as often as necessary their comments on the notifications addressed to them by it or on communications from the other parties.

68 It follows from the foregoing that the second ground of appeal is manifestly unfounded and must therefore be rejected.

Third ground of appeal: infringement of Article 8(1)(b) of Regulation No 40/94

69 By its third ground of appeal, the appellant maintains, first of all, that, as it has already argued in the context of the first ground of appeal, by failing to take account of the heightened distinctiveness of the earlier mark, the Board of Appeal was unable to make a complete and correct assessment of the likelihood of confusion under Article 8(1)(b) of Regulation No 40/94, and the General Court erred in law in the interpretation of that provision by failing to annul the contested decision. In addition, the error of law, inter alia, led the General Court, at paragraph 77 of the judgment under appeal, to dismiss as inoperative an argument formulated by the appellant as to how the two marks at issue are assessed in professional circles.

70 For the reasons already set out at paragraphs 42 to 44 of this order, the first limb of this ground of appeal must, like the second limb of the first ground of appeal, be rejected as manifestly unfounded.

71 Secondly, the appellant submits that the General Court was wrong to hold, at paragraph 99 of the judgment under appeal, that the argument formulated by it alleging disregard by the Board of Appeal of a position adopted by OHIM’s representative before the Community Courts had to be dismissed in the light of the independence of the President and the members of the Boards of Appeal of OHIM.

72 In this connection, it must however be observed that the General Court was plainly right to find that a Board of Appeal whose task, as the General Court noted at paragraph 98 of the judgment under appeal, is inter alia to ensure the proper application of Regulation No 40/94, cannot, in the exercise of this task, in particular in the light of the independence enjoyed by its members, as noted in paragraph 99 of the judgment, be bound by a position allegedly defended by an OHIM official at a hearing before the Community Courts; accordingly this second limb of the ground of appeal must also be rejected as manifestly unfounded.

73 The appellant submits, thirdly, that the assessment in paragraph 84 of the judgment under appeal to the effect that the only thing which the marks at issue have in common is their ending ‘ol’ reflects an approach based on dissection and disregards the principle that, in the case of short marks, it is the overall impression they give that is crucial in determining whether they are similar.

74 In this connection, it is however sufficient to note that, in thereby isolating a passage in the reasoning in the judgment under appeal in which the General Court made a visual comparison of the marks, Kaul is distorting the scope of this passage. In fact, it is clear from the series of findings made at paragraphs 83 to 85 of the judgment, and also from the second sentence of paragraph 84, that the General Court is in fact making a global assessment of the whole formed by each of the marks at issue, from a visual perspective, with a view to confirming the correctness of the Board of Appeal’s assessment that the marks are significantly different in this respect, and in this connection the findings made at paragraph 84 of the judgment under appeal plainly constitute only a link in the reasoning of the General Court.

75 In addition, it is clear that, in thus comparing the marks visually, the General Court made factual findings which it is not for the Court of Justice to review in the context of an appeal. It is settled case-law that the effect of Article 225 EC and the first paragraph of Article 58 of the Statute of the Court of Justice is that an appeal lies on points of law only and the appraisal of the facts by the General Court does not, save where they are distorted, which is not alleged in this case, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see, in particular, Il Ponte Finanziaria v OHIM, paragraph 38 and case-law cited, and orders of 9 March 2007 in Case C‑245/06 P Saiwa v OHIM paragraphs 47 and 48, and 15 February 2008 in Case C‑243/07 P Brinkmann v OHIM, paragraph 36).

76 Accordingly, the third limb of the third ground of appeal must be dismissed as being in part manifestly unfounded and in part manifestly inadmissible.

77 It follows from all of the foregoing that the appeal must be dismissed in its entirety.

Costs

78 Under Article 69(2) of the Rules of Procedure, which applies to appeal proceedings by virtue of Article 118 thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM has applied for costs and the appellant has been unsuccessful, the latter must be ordered to pay the costs.

On those grounds, the Court (Eighth Chamber) hereby orders:

1. The appeal is dismissed.

2. Kaul GmbH shall pay the costs.





Luxembourg, 4 March 2010.

[Signatures]