Sanco, SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (T-249/11)

Contents

Judgment of the General Court (First Chamber)14 May 2013^note(Community trade mark — Opposition proceedings — Application for Community figurative mark representing a chicken — Earlier national figurative mark representing a chicken — Relative ground for refusal — Similarity between goods and services — Article 8(1)(b) of Regulation (EC) No 207/2009)In Case T-249/11,Sanco, SA, established in Barcelona (Spain), represented by A. Segura Roda, lawyer,vOffice for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,Marsalman, SL, established in Barcelona,THE GENERAL COURT (First Chamber),composed of J. Azizi (Rapporteur), President, S. Frimodt Nielsen and E. Buttigieg, Judges,Registrar: E. Coulon,having regard to the application lodged at the Court Registry on 10 May 2011,having regard to the response lodged at the Court Registry on 14 September 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, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,gives the following

Judgment

Background to the proceedings

1On 18 February 2008, Marsalman, SL filed an application for registration of a Community trade mark 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)).

2The trade mark in respect of which registration was sought is the following figurative sign:

3The goods and services in respect of which registration was sought are in Classes 29, 35 and 39 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:— Class 29: ‘Chickens’;— Class 35: ‘Advertising, commercial agencies, franchising, export and import; wholesaling and retailing of all kinds of foodstuffs and selling via global computer networks of foodstuffs of all kinds’;— Class 39: ‘Transport, storage and distribution of chickens.’

4The Community trade mark application was published in Community Trade Marks Bulletin No 28/2008 of 14 July 2008.

5On 14 October 2008, the applicant, Sanco, SA, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), in relation to registration of the mark applied for in respect of the goods and services referred to at paragraph 3 above.

6The opposition was based on the earlier Spanish figurative mark reproduced below:

7That mark designated goods in Classes 29 and 31 and corresponds, for each of those classes, to the following description:— Class 29: ‘Meat, poultry and game; meat extracts’;— Class 31: ‘Live animals.’

8The ground relied on in support of the opposition was that referred to in Article 8(1)(a) and (b) of Regulation No 40/94 (now Article 8(1)(a) and (b) of Regulation No 207/2009).

9On 13 April 2010, the Opposition Division upheld the opposition in part and refused registration of the mark applied for as regards ‘chickens’ in Class 29 and for ‘wholesaling and retailing of all kinds of foodstuffs and selling via global computer networks of foodstuffs of all kinds’ in Class 35. On the other hand, it rejected the opposition for ‘advertising, commercial agencies, franchising, export and import’ in Class 35 and ‘transport, storage and distribution of chickens’ in Class 39.

10On 14 June 2010, the applicant filed a notice of appeal with OHIM pursuant to Articles 58 to 64 of Regulation No 207/2009 against the Opposition Division’s decision in so far as it partially rejected the applicant’s opposition.

11By decision of 17 February 2011 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal and confirmed the Opposition Division’s decision in so far as it rejected the opposition in part. The Board of Appeal found that the relevant public consisted of both the average consumer from the general public and the average consumer from a specialised public. In addition, the Board of Appeal considered that the services covered by the mark applied for, namely ‘advertising, commercial agencies, franchising, export and import’ and ‘transport, storage and distribution of chickens’, were not similar to the goods covered by the earlier mark, namely ‘meat, poultry and game; meat extracts’ and ‘live animals.’ Having regard to the lack of similarity between the goods and services covered by the signs at issue, the Board of Appeal found that there was no likelihood of confusion between the mark applied for and the earlier national figurative mark, without it being necessary to compare the signs at issue.

Forms of order sought

12The applicant claims that the Court should:— annul the contested decision and refuse registration of the mark applied for as regards all of the goods and services covered by it;— order OHIM to pay the costs.

13OHIM contends that the Court should:— dismiss the action;— order the applicant to pay the costs.

Law

1.The action for annulment of the contested decision

Preliminary considerations

14In the contested decision, the Board of Appeal found, in essence, that because of the lack of similarity between the goods protected by the earlier mark and the services of ‘advertising, commercial agencies, franchising, export and import’ and ‘transport, storage and distribution of chickens’ covered by the mark applied for there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 between the marks at issue, without there being any need to compare the signs at issue (paragraphs 22 and 25 of the contested decision). The applicant is of the opinion that the contested decision breached Article 8(1)(b) of Regulation No 207/2009 because there was a similarity between the goods designated by the earlier mark and those services covered by the mark applied for.

15In that regard, it should be borne in mind that, under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, 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.

16It follows that in the absence of identity or similarity between the goods and services covered by the signs at issue there cannot be a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 (see, to that effect and by analogy, Case C-39/97 Canon [1998] ECR I-5507, paragraph 22).

17Furthermore, it should be noted that the risk that the public might believe that the goods or services at issue come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. As has been recognised, 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).

18It follows that a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the signs, and vice versa (see, to that effect and by analogy, Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 19).

19In the light of the foregoing, it should be noted that it is only in so far as it is established that there is no similarity between the goods and services covered by the marks at issue that a likelihood of confusion between those marks may be excluded without there being any need to carry out a global assessment, taking into account all relevant factors, of the perception the relevant public has of the signs and of the goods and services at issue.

20In the present case, it is therefore necessary to ascertain whether the Board of Appeal could find, without erring, that the goods and services covered by the marks at issue were in no way similar, so that all likelihood of confusion between the marks at issue was excluded, without it carrying out a global assessment of the likelihood of confusion.

Comparison of the goods and services at issue

Basic considerations

21In assessing the similarity of the goods and services at issue, it is settled case-law that all the relevant factors relating to those goods and services should be taken into account. Those factors include, inter alia, 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).

22As regards, more particularly, the complementarity of the goods and services, it must be recalled that goods or services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (PiraÑAM diseño original Juan Bolaños, paragraph 48, and Case T-316/07 Commercy v OHIM-easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraph 57 and the case-law cited). Thus, for the purposes of the assessment of whether the goods and services are complementary, the perception of that public of the importance of a product or service for the use of another product or service should, ultimately, be taken into account.

23Accordingly, the assessment of the similarity of the goods and services in terms of whether they are in competition with each other or are complementary requires that the consumer of those goods and services is first defined.

–The relevant public

24In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods and services concerned, who is reasonably well-informed and reasonably observant and circumspect (see, to that effect, Case T-256/04 Mundipharma v OHIM - Altana Pharma (RESPICUR) [2007] ECR II-449, paragraph 42 and the case-law cited).

25The relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and those covered by the mark applied for (see judgment of 24 May 2011 in Case T-408/09 ancotel v OHIM – Acotel (ancotel), not published in the ECR, paragraph 38 and the case-law cited).

26In the present case, the Board of Appeal found that advertising, commercial agencies, franchising, export and import and transport, storage and distribution of chickens cover services aimed, first, at the general public and, second, at a specialised public. It pointed out, next, that some of those services were generally aimed at commercial undertakings. It therefore found that the relevant public for the assessment of the likelihood of confusion was comprised of both the average consumer from the general public and the average consumer from a more specialised public (see paragraph 19 of the contested decision).

27The Court considers that the Board of Appeal was correct to find that the abovementioned services were aimed at professionals. The latter are likely to seek such services. Furthermore, it cannot be excluded that some of those services are aimed at the general public. In addition, as regards ‘meat, poultry and game; meat extracts’ and ‘live animals’, it should be noted that although those goods are produced by professionals and although the rearing of live animals is principally carried out by professionals, those goods are bought both by individuals and by professionals.

28It follows that the Board of Appeal did not err in finding, in the present case, that the relevant public of the goods and services at issue was comprised of both professionals and individuals.

–The similarity of the goods at issue and the services of advertising, commercial agencies, franchising and export and import

29In the contested decision, the Board of Appeal found that there was no similarity between, first, ‘meat, poultry and game; meat extracts’ and ‘live animals’ covered by the earlier mark and, second, ‘advertising, commercial agencies, franchising, export and import’ covered by the mark applied for.

30The applicant disputes that assessment on the ground that the services and goods in question are connected and that the relevant public is likely to think that the goods and services at issue come from the same undertaking or from economically-linked undertakings. OHIM disputes that assessment and refers, in essence, to the reasoning set out in the contested decision.

31In this respect, the Court notes, first, that the Board of Appeal was correct to find that meat, poultry, game, meat extracts and live animals differed from advertising, commercial agencies, franchising and export and import by their nature, their intended purpose and their method of use. The abovementioned goods and services are neither interchangeable nor competing, which is indeed not disputed by the applicant.

32As regards the distribution channels, the Board of Appeal found, without it being challenged by the applicant, that they were different on the ground that it was unlikely, even impossible, that a farm or a poultry plant would be used to provide the services of advertising, commercial agencies, franchising or export and import to undertakings. In the light of those goods and services, the Board of Appeal could find without erring that the distribution channels of those goods and services were distinct.

33However, as set out at paragraph 21 above, in assessing the similarity of the goods and services, it is also necessary to take into account whether those goods and services are complementary.

34In this respect, the Board of Appeal found that the goods of the earlier mark and the services of advertising, commercial agencies, franchising and export and import were not even complementary because the nature, method of use and distribution channels of the goods such as chickens and live animals had no connection with those services, which the consumer would perceive easily (see paragraph 23 of the contested decision).

35Accordingly, the Board of Appeal found that, from the point of view of the relevant public, the goods and services concerned were not complementary, on the ground that there was no connection between their nature, their method of use and their distribution channels.

36However, as set out at paragraph 22 above, the complementarity between the goods and services in the context of a likelihood of confusion does not rely on the existence of a connection between the goods and services at issue in the mind of the relevant public from the point of view of their nature, their method of use and their distribution channels but on the close connection between those goods and services, in the sense that one is indispensable or important for the use of the other in such a way that the public might think that the responsibility for the production of those goods or provision of those services lies with the same undertaking.

37It follows that the Board of Appeal could not reject the existence of a complementarity between the goods and services concerned on the sole ground that there was no connection between their nature, their method of use and their distribution channels. By proceeding in that way, it again took into account the nature, method of use and distribution channels of the goods and services at issue without deciding on the importance of one for the use of the other from the point of view of the relevant public.

38As regards, in particular, the connection between the method of use of those goods and the method of use of those services raised by the Board of Appeal, it must be noted that that criterion does not enable full appreciation of the indispensability or importance of those goods and services for each other which requires analysis of the complementarity between those goods and services. The fact that the method of use of a product or service is unrelated to the method of use of another product or service does not imply in each case that the use of one is not important or indispensable for the use of the other.

39Accordingly, it should be stated that the Board of Appeal did not correctly examine, inter alia, whether, from the point of view of a professional purchaser of chickens or of meat, the services of advertising, commercial agencies, franchising or export and import were important during the purchase of chickens or meat to the extent that he would think that the responsibility for the production of those goods or provision of those services lies with the same undertaking.

40That failure, which characterises the Board of Appeal’s examination, is highlighted by OHIM’s claim before the General Court that a meat producer could provide an import and export service for its own goods to its own clients. If that is the case, it cannot be excluded that the relevant public of those goods believes that, for the purchase of those goods, an import and export service is important therefore he will assume that those goods and that service come from the same undertaking. The case put forward by OHIM, that the import and export service cannot be provided for consideration and cannot be offered to third parties does not affect that assessment. First, it is not shown, in the situation invoked by OHIM, that that service would be offered free or that it would not be an integral part of the proposed sale. Second and in any event, it is necessary to assess the perception of the relevant public as regards the existence of a sufficiently close connection between those goods and services. However, in the present case, the Board of Appeal failed to assess those parameters.

41Therefore, it should be stated that, by not taking into account those parameters, the Board of Appeal erred in the assessment of the complementarity between the goods covered by the earlier mark and the services of advertising, commercial agencies, franchising, export and import covered by the mark applied for.

42That error resulted in the Board of Appeal not taking into account all factors relevant to the assessment of the similarity of the goods and services in question. In the absence of an analysis taking into account all factors relevant to the assessment of the existence of a similarity between the goods and services at issue, the contested decision must be annulled in that regard.

–The similarity between the goods at issue and the services of transport, storage and distribution of chickens

43In the contested decision, the Board of Appeal found that there was no similarity between the ‘transport, storage and distribution of chickens’ covered by the mark applied for and the ‘meat, poultry and game; meat extracts’ and ‘live animals’ covered by the earlier mark.

44The applicant disputes that assessment and takes the view that, in the light of the connectivity of the markets of the goods and services at issue, it would be very unlikely that a mark could designate one of those services independently of the product.

45In this respect, the Court observes, first, that the applicant does not dispute the Board of Appeal’s assessment that the goods and services referred to at paragraph 43 above are dissimilar in their nature, their object and their intended purpose. That assessment of the Board of Appeal must be upheld. Transport, storage and distribution of chickens does not have the same nature, the same purpose or the same method of use as meat, poultry and game, meat extracts and live animals. In addition, the goods and services at issue are not competing or interchangeable. Those services cannot replace meat or live animals.

46The Board of Appeal inferred from the distinction between those goods and services on the basis of their nature, their object and their intended purpose that undertakings specialising in transport and undertakings specialising in production of the goods covered by the earlier mark were also different (see paragraph 24 of the contested decision).

47The Court observes however that the fact that the production of meat, poultry, game, meat extracts and the rearing of live animals and the provision of the services of transport, storage and distribution of chickens presupposes a specialisation does not necessarily imply that the undertakings offering those services are distinct from those responsible for the production of those goods. As the Board of Appeal stated in the contested decision, it is possible that undertakings producing chickens and live animals transport, store and distribute their goods on their own behalf (see paragraph 24 of the contested decision).

48Furthermore, in order to assess the complementarity of those goods and services, it is necessary to determine not only the specialisation of the undertakings, but also whether the consumers of those goods and services may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking due to the connection between those goods and services. Consequently, the existence of undertakings specialising in the production of goods of the earlier mark and in the provision of the services of transport, storage and distribution of chickens is not sufficient to establish a lack of complementarity between those goods and services.

49The Board of Appeal also found that the relevant public of those goods and services was different on the basis of the specialisation of the undertakings in question, so that there is no industrial or commercial connection between those undertakings. More specifically, it found that, taking account of their particular character, the services of transport, storage and distribution of chickens are generally aimed at undertakings and at professionals in a very specific sector. It inferred therefrom that the public was different from the public at which the goods of the earlier mark were aimed, which automatically ruled out the assumption of an industrial or commercial connection between those undertakings (see paragraph 24 of the contested decision). OHIM supported that approach in its response.

50In this respect, the Court notes that the transport, storage and distribution of chickens of the mark applied for are services which are aimed at a professional public. By contrast, the goods covered by the earlier mark are intended both for the general public and for professionals. Although meat, poultry, game and meat extracts are goods intended for the general public, they may also be aimed at professional purchasers. Live animals, including chickens, are aimed primarily at professionals.

51In so far as those goods are aimed at a professional public, the Board of Appeal erred in finding that that public was different from the public of the services of transport, storage and distribution of chickens. A professional public is likely to purchase both the goods at issue and the abovementioned services.

52Furthermore, as regards the existence of a close connection between those goods and services, it must be noted that to use a service relating of transport, storage and distribution of chickens it is necessary to have chickens to transport, store and distribute. To that effect, chickens are indispensable for the use of the services of transport, storage and distribution of chickens. Conversely, for a chicken producer it may be important to have a service of transport, storage and distribution of chickens for its chickens. From this point of view, there is a close connection between the transport, storage and distribution of chickens of the mark applied for and the chickens of the earlier mark. Given that the term ‘chicken’ also refers to the meat of the animal, that connection does not exist only as regards live animals but also for the meat and poultry designated by the earlier mark.

53In addition, the professional consumer of those goods and services, namely an undertaking purchasing chickens wholesale that also needs the services of transport, storage and distribution of chickens, is likely to think that the responsibility for the production of those goods or provision of those services lies with the same undertaking. Since some producers also offer a transport service, the purchaser of chickens is likely to think that the responsibility for the production of those goods or provision of those services lies with the same undertaking.

54OHIM disputes the existence of a similarity between the goods and services at issue on grounds similar to those given at paragraph 40 above. It takes the view that when a chicken producer transports, stores and distributes its own chickens the transport, storage and distribution are not services provided to a third party for consideration, but that they are only ‘internal’ or ancillary services in relation to the production of chickens, so that the producer in question will not be active in the market of transport, storage and distribution of chickens. In support of that argument, OHIM relies on, first, an analogy with the need to prove public use of a mark to show its actual use and, second, the findings of the General Court in the judgment of 7 February 2006 in Case T-202/03 Alecansan v OHIM – CompUSA (COMP USA), not published in the ECR, paragraph 47.

55In this respect, the Court notes first, by analogy with what was set out at paragraph 40 above, that the Board of Appeal in no way substantiates its claim that when producers transport, store and distribute their own chickens it is not a service provided to third parties for consideration. However, it cannot be inferred from the fact that an undertaking which rears chickens also provides a chicken transport service that that service is not provided for consideration. Furthermore, it cannot be inferred from such joint provision that the undertaking which provides those additional services is not in the market of chicken transport services. The fact that a chicken producer provides transport services as regards its own chickens implies that it is in competition with undertakings which provide chicken transport services. Therefore, that producer is present on that market.

56Next and more fundamentally, it should be stated that the complementarity of the goods and services for the requirements of the assessment of the similarity between those goods and services is not assessed on the basis of whether the goods or services have an ‘internal’ character in accordance with the arguments developed by OHIM (see paragraph 54 above), but on the basis of the perception by the relevant public that the responsibility for the production of those goods or provision of those services lies with the same undertaking or with different undertakings (see paragraph 22 above). The approach adopted by the Board of Appeal and supported by OHIM in order to rule on whether the goods and services at issue are complementary is therefore incorrect.

57Purely to illustrate the error in the approach advocated by OHIM, it must be noted that, in the present case, it leads to the finding that when an undertaking which seeks both to purchase chickens and to transport them is faced with, first, a chicken producer present on the market under a particular mark and, second, a provider of chicken transport services present on that market with a mark identical to that of the aforementioned producer, that undertaking is not likely to consider that those goods and services come from the same undertaking because when a chicken producer provides a transport service that service is only a service which is ancillary or ‘internal’ to the production of chickens and it is therefore not in the market for the transport of chickens. According to the approach defended by OHIM, there is no similarity between the production of chickens and the transport, storage and distribution of chickens, so that the identical marks for those goods and services could coexist without a likelihood of confusion on the part of consumers of those goods and services.

58However, on the grounds set out at paragraph 53 above, the wholesale purchaser of chickens, which also needs a chicken transport service, is likely to take the view that there is a strong link between the production of chickens and the transport, storage and distribution of chickens, so that the consumer of those goods and services will consider that they come from the same undertaking.

59Given that the presence on the market as defined by OHIM in the present case (see paragraph 54 above) cannot be taken into account, the analogy with the rules on the subject of actual use of an earlier mark in the context of an opposition must be rejected.

60Furthermore, in so far as OHIM relies on the case giving rise to the judgment in COMP USA, it must be stated that it differs from the present case in so far as it related to the distance selling of information technology goods and services. In addition, in contrast to that case, where it was found that physically sending computer software and computers bought or rented from an undertaking offering its goods by means of the internet was merely the execution of a distance selling contract or of a service contract which is not connected to transport services (COMP USA, paragraph 47), it cannot be held, without proof from OHIM to that effect, that the transport, storage and distribution of chickens is merely the execution of the sale of chickens or of a service contract which is not connected to the transport, storage and distribution of chickens.

61However, the Board of Appeal could not automatically exclude the existence of a complementarity between the goods of the earlier mark and the services of transport, storage and distribution of chickens. Such complementarity must be found between at least chickens and the transport, storage and distribution of chickens.

62In assessing the similarity of the goods and services at issue, the Board of Appeal had to take into account all the relevant factors relating to the relationship between the goods and services at issue. Thus, notwithstanding the difference between, on the one hand, chicken meat and live chickens and, on the other, the transport, storage and distribution of chickens as regards their nature, their intended purpose, their method of use and whether they are in competition with each other, the Board of Appeal should have deemed them to have some degree of complementarity. It is apparent from the taking into account of all relevant factors in assessing the similarity of those goods and services that the Board of Appeal erred in considering that those goods and services were in no way similar.

63It is therefore necessary to annul the contested decision in so far as it holds that the goods of the earlier mark are not in any way similar to the services of transport, storage and distribution of chickens of the mark applied for.

2.The head of claim seeking refusal to register the Community trade mark applied for

64The applicant claims that the Court should deliver a judgment refusing to register the Community trade mark applied for in relation to all of the goods and services covered by the mark applied for.

65In this respect, it should be noted that the review carried out by the Court is a review of legality. Where there has been an error it may annul the decision of the Board of Appeal and, if it has been applied for in the successful party’s pleadings, alter it. It is not for the Court to register or refuse registration of a mark. Under Article 266 TFEU and Article 65(6) of Regulation No 207/2009, OHIM is required to take the measures necessary to comply with any judgment ordering annulment that may be given by the Courts of the European Union. It is not for the General Court to issue directions to OHIM, which is required to draw the appropriate inferences from the operative part and grounds of the Court’s judgment (see judgment of 21 June 2012 in Case T-276/09 Kavaklidere-Europe v OHIM – Yakult Honsha (Yakut), not published in the ECR, paragraph 17 and the case-law cited).

66In so far as the applicant’s form of order must be interpreted as requesting the Court to instruct OHIM not to register the mark applied for in relation to all the goods and services covered by it, that form of order must be declared inadmissible.

67In so far as that form of order must be interpreted as requesting the Court to alter the contested decision so that the Court substitutes for the contested decision a decision declaring that the mark applied for cannot be registered for the services which had not yet been refused registration in the Opposition Division’s decision, it should be noted that the power of the General Court to alter decisions does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position (Case C-263/09 P Edwin v OHIM [2011] ECR I-5853, paragraph 72).

68Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (Edwin v OHIM, paragraph 67 above, paragraph 72).

69However, that is not the situation in the present case. The methodological error committed in the assessment of the similarity of the goods and services set out at paragraph 29 et seq. based on the failure to adequately take into account their complementarity results in the Court having to carry out an assessment on which the Board of Appeal has not adopted a position. Furthermore, as is apparent from paragraph 43 et seq., a similarity, however small, must be recognised between some of the goods and services at issue, which implies that the Board of Appeal should have analysed the similarity between the marks at issue and analysed the global likelihood of confusion, which it failed to do.

70Therefore, it is necessary to reject the applicant’s form of order requesting the Court to refuse registration of the Community trade mark even if that form of order must be interpreted as an application for the decision to be altered.

Costs

71Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

72Since OHIM has essentially been unsuccessful, it must be ordered to pay the costs in accordance with the forms of order sought by the applicant.

Operative part

On those grounds,THE GENERAL COURT (First Chamber)hereby:

1.Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 17 February 2011 (Case R 1073/2010-2);

2.Dismisses the action as to the remainder;

3.Orders OHIM to pay the costs.

Delivered in open court in Luxembourg on 14 May 2013.