JUDGMENT OF THE COURT OF FIRST INSTANCE (Eighth Chamber)

11 June 2009 (*)

(Community trade mark – Opposition proceedings – Application for Community figurative mark Gallecs – Earlier national and Community figurative marks GALLO, GALLO AZEITE NOVO, GALLO AZEITE – Relative ground for refusal – No likelihood of confusion – Lack of similarity between the signs – Article 8(1)(b) and (5) of Regulation (EC) No 40/94 (now Article 8(1)(b) and (5) of Regulation (EC) No 207/2009))

In Case T‑151/08,

Victor Guedes – Indústria e Comércio SA, established in Lisbon (Portugal), represented by B. Braga da Cruz, lawyer,

applicant,

v

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

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Consorci de l’Espai Rural de Gallecs, established in Gallecs (Spain),

ACTION brought against the decision of the Second Board of Appeal of OHIM of 16 January 2008 (Case R 986/2007-2) relating to opposition proceedings between Victor Guedes – Indústria e Comércio SA and Consorci de l’Espai Rural de Gallecs,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Eighth Chamber),

composed of E. Martins Ribeiro, President, S. Papasavvas and A. Dittrich (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the Court of First Instance on 21 April 2008,

having regard to the response lodged at the Court Registry on 21 August 2008,

having regard to the fact that no application for a hearing to be arranged was submitted by the parties within the period of one month from notification of the closure of the written procedure, and having therefore decided, acting on a report from the Judge‑Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the Court of First Instance,

gives the following

Judgment

 Background to the dispute

1        On 19 March 2004, Consorci de l’Espai Rural de Gallecs filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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 in respect of which registration was sought is the following figurative sign Gallecs:

3        The goods and services in respect of which registration was sought fall within Classes 29, 31 and 35 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following abridged descriptions:

–        Class 29: ‘Meat, fish, poultry, game; meat extracts; preserved fruits, dried and cooked fruits and vegetables; jams; eggs, milk and milk products; edible oils and fats’;

–        Class 31: ‘Fresh fruits and vegetables, seeds, natural plants and flowers; live animals; foodstuffs for animals’;

–        Class 35: ‘Commercial or industrial business management; retail sales; publicity; business management and assistance; import; export; representation services, rearrangement of various goods (except transport) for others, to enable consumers to examine and purchase these goods conveniently, statistical information/professional business consultancy; organisation of trade fairs, exhibitions and congresses for commercial purposes’.

4        The application was published in Community Trade Marks Bulletin No 3/2005 of 17 January 2005.

5        On 18 April 2005, the applicant, Victor Guedes – Indústria e Comércio SA, filed a notice of opposition against the registration of the mark applied for in respect of the goods in Classes 29 and 31. The opposition was based on the existence of the earlier figurative marks that had been registered as follows:

–        Community trade mark registration No 3 274 917 registered on 14 October 2004 for olive oil and edible oils and fats in Class 29 (‘earlier mark No 1’) for the figurative mark reproduced below:

–        Portuguese trade mark registration No 345 979 registered on 30 October 2000 for oils in Class 29 (‘earlier mark No 2’) for the figurative mark reproduced below:

–        Portuguese trade mark registration No 281 973 registered on 6 December 1993 for oils in Class 29 (‘earlier mark No 3’) for the figurative mark reproduced below:

–        Portuguese trade mark registration No 281 974 registered on 6 December 1993 for oils in Class 29 (‘earlier mark No 4’) for the figurative mark reproduced below:

–        Portuguese trade mark registration No 281 978 registered on 6 December 1993 for oils in Class 29 (‘earlier mark No 5’) for the figurative mark reproduced below:

6        By decision of 27 April 2007, the Opposition Division of OHIM rejected the opposition in its entirety. In essence, it held that some of the goods in Classes 29 and 31 covered by the mark applied for and by the earlier marks were identical or similar. However, the Opposition Division found that the signs at issue were not similar, because of their different overall impression. The Opposition Division thus held that there was no likelihood of confusion in Portugal or more generally within the Community.

7        On 25 June 2007, the applicant filed a notice of appeal against the decision of the Opposition Division.

8        By decision of 16 January 2008 (‘the contested decision’), the Second Board of Appeal dismissed the appeal. The Board of Appeal found, in essence, that some of the goods covered by the marks at issue were identical, while others were different, and that, as a whole, the signs at issue were different visually, phonetically and conceptually. It held that earlier mark No 3 enjoyed an enhanced level of distinctiveness. Thus, notwithstanding the identical nature of certain goods and the enhanced distinctiveness of one of the earlier marks, the Board of Appeal held that one of the essential requirements for the application of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009) was lacking, namely that the signs at issue must be identical or similar, with the result that no likelihood of confusion was possible. As regards Article 8(5) of Regulation No 40/94 (now Article 8(5) of Regulation No 207/2009), the Board of Appeal upheld the Opposition Division’s finding that that provision did not apply.

 Forms of order sought by the parties

9        The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to refuse to register the mark applied for in relation to the goods in Classes 29 and 31;

–        order OHIM to pay the costs.

10      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

1.     Admissibility of the applicant’s second head of claim

11      By its second head of claim, the applicant is asking the Court to direct OHIM to refuse to register the mark applied for. It should be recalled in that connection that, under Article 63(6) of Regulation No 40/94 (now Article 65(6) of Regulation No 207/2009), OHIM is to take the measures necessary in order to comply with the judgment of the Community judicature. Accordingly, it is not for the Court of First Instance to issue directions to OHIM. It is for OHIM to draw the appropriate inferences from the operative part of this judgment and the grounds on which it is based (see, to that effect, Case T-331/99 Mitsubishi HiTec Paper Bielefeld v OHIM (Giroform) [2001] ECR II‑433, paragraph 33, and Case T-34/00 Eurocool Logistik v OHIM (EUROCOOL) [2002] ECR II-683, paragraph 12). The applicant’s second head of claim is therefore inadmissible.

2.     The application for annulment of the contested decision

12      In support of its action for annulment of the contested decision, the applicant relies on two pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation No 40/94 and, second, infringement of Article 8(5) of that regulation.

 The first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94

–       Arguments of the parties

13      First, the applicant refers to the enhanced distinctiveness of the GALLO mark, which has been on the market for almost a century. GALLO olive oil has an important place in the food sector. Since that oil is the market leader in Portugal and the main olive oil brand in several countries, it must enjoy special protection.

14      The applicant submits that the GALLO mark is perceived by most of the Portuguese population as referring to olive oil, which is an essential ingredient in Portuguese cuisine.

15      Second, the applicant disputes that the goods covered by the earlier marks are not identical with or similar to ‘meat, fish, poultry, game; meat extracts; preserved fruits, dried and cooked fruits and vegetables; jams; eggs, milk’ in Class 29 and ‘fresh fruits and vegetables, seeds, natural plants and flowers; live animals; foodstuffs for animals’ in Class 31.

16      In its decision of 24 March 2005 (Case No 1089/2005 LA PERLA v PEARLS), OHIM stated that olive oil is often used for frying, cooking and seasoning vegetables, meat and fish, and olive dips often served together with raw vegetables. Olive oil and ‘preserved, dried and cooked fruit and vegetables; tinned meat, vegetables and fish’ are therefore complementary. OHIM further stated that such goods were foodstuffs which fulfil the same needs, are usually sold in the same shops, and are often produced by the same undertakings.

17      In that connection, the applicant submits that its website contains information relating to olive oil for roasts, stews, fritters and grills.

18      In the applicant’s submission, the goods concerned belong to the same category, namely foodstuffs.

19      The fact that the goods concerned all belong to the same class of the Nice Agreement leads to the conclusion that the goods or services are linked.

20      Third, regarding the similarity between the marks at issue, the applicant submits that the general rule is that the dominant element of a mark is its word element. For the public tends to remember and more easily recall the word element. The present case concerns the word elements Gallo and Gallecs.

21      With regard to the figure of the church appearing in the mark applied for, the applicant states that, historically, the figure of the cockerel is present in various religious ceremonies and also in the history of Christianity itself. The applicant refers to midnight mass celebrated on Christmas Eve, which is known as the ‘missa do galo’ or ‘mass of the cockerel’, to the paschal candle, referred to in Portugal as the ‘cockerel of darkness’, and to the cock which crowed three times.

22      The applicant submits that an internet search carried out on two search engines using the group of terms ‘galo’ and ‘igreja’ (‘cockerel’ and ‘church’) disclosed 546 000 and 225 000 Portuguese-language pages respectively.

23      The applicant considers that the core element of the mark applied for is the word element ‘gallecs’, having regard in particular to the size of the letters used, which gives it special prominence within the sign applied for.

24      The applicant states that the signs at issue share the group of letters ‘gall’. In trade marks in which the word element predominates, the first part is generally the one that attracts the consumer’s attention the most.

25      The applicant submits that the mark applied for reproduces the initial part of the earlier mark. The only difference between the marks is their endings, that is to say the letter ‘o’ and the group of letters ‘ecs’. The word element ‘ecs’ will easily go unnoticed when pronounced by the average consumer, not only because it is placed at the end of the mark but also due to its weak sound. The applicant submits that that difference between the marks is not relevant.

26      The visual impression of the marks at issue is that the initial and core parts of them are the same, namely the word element ‘gall’. In addition, the initial part of the marks at issue also contains a tonic syllable.

27      The consumer concerned is therefore led to believe that the signs in question, used in relation to goods that are identical or related to one another, have the same origin or come from commercial undertakings that are economically linked. In the applicant’s submission, that means that the marks at issue are confusingly similar.

28      OHIM does not accept the applicant’s arguments.

–       Findings of the Court

29      Under Article 8(1)(b) of Regulation No 40/94, 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; the likelihood of confusion includes the likelihood of association with the earlier trade mark’. In addition, under Article 8(2)(a)(i) and (ii) of Regulation No 40/94 (now Article 8(2)(a)(i) and (ii) of Regulation No 207/2009), ‘earlier trade marks’ is to mean Community trade marks and trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark in question.

30      It is settled case-law that the risk that the public might believe that the goods or services in question come from the same undertaking or from economically‑linked undertakings constitutes a likelihood of confusion (Case T‑483/04 Armour Pharmaceutical v OHIM – Teva Pharmaceutical Industries (GALZIN) [2006] ECR II‑4109, paragraph 63; see, by analogy, the judgments of the Court in Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 29, and Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 17).

31      In addition, it is settled case-law that the likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (see Case T‑104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359, paragraph 26, and GALZIN, cited in paragraph 30 above, paragraph 63 and the case-law cited).

32      That 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 that of the goods or services covered. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see GALZIN, cited in paragraph 30 above, paragraph 64 and the case-law cited).

33      In addition, the global appreciation of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the signs at issue, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components (Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 23, and Lloyd Schuhfabrik Meyer, cited in paragraph 30 above, paragraph 25).

34      As regards the definition of the relevant public, the goods and services which are the subject of the Community trade mark application and those covered by the earlier marks are intended for all consumers, so that the relevant public is the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect.

35      As regards the relevant territory, the earlier marks are registered in the Community and in Portugal, so that the territory in respect of which the likelihood of confusion must be assessed is the Community and Portugal in particular.

36      It is in the light of the above considerations that the Board of Appeal’s assessment of the likelihood of confusion should be examined.

37      As regards, first of all, the identical nature of or the similarity of the signs, it should be pointed out that, in general terms, signs are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, that is to say visually, aurally and conceptually (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 30).

38      First, as regards the visual comparison of the marks at issue, the applicant in essence disputes the findings of the Board of Appeal that, with the exception of earlier mark No 2, the signs at issue must be compared as a whole and are different. The applicant submits that, for all the marks at issue, the comparison must relate only to the word elements ‘gallo’ and ‘gallecs’, which, in its submission, are dominant elements.

39      It is settled case-law of the Court of Justice that, in the context of consideration of the likelihood of confusion, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole (see Case C‑193/06 P Nestlé v OHIM of 20 September 2007, not published in the ECR, paragraph 35 and the case-law cited).

40      However, where one of the components of a complex mark is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it, the assessment of the similarity can be carried out solely on the basis of the dominant element (Nestlé v OHIM, cited in paragraph 39 above, paragraph 43, and MATRATZEN, cited in paragraph 37 above, paragraph 33).

41      First, as regards the mark applied for, it should be noted that it is characterised by a word element and a figurative element both inside a circle. The figurative element consists of a church, whereas the word element is composed of the word ‘gallecs’.

42      As regards the size of both elements, the figurative element occupies slightly more than half of the circle, and the word element slightly less than half. Since the figurative element is larger than the word element, the applicant’s argument that the main element of the mark applied for is its word element, having regard in particular to the size of its letters, cannot be accepted. The applicant has not brought forward any other argument to show that the figurative element of the mark applied for is negligible.

43      In addition, it should be observed that the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect, normally perceives a mark as a whole and does not proceed to analyse its various details (SABEL, cited in paragraph 33 above, paragraph 23; Lloyd Schuhfabrik Meyer, cited in paragraph 30 above, paragraph 25; and Fifties, cited in paragraph 31 above, paragraph 28).

44      It therefore cannot be concluded that the attention of the relevant public is attracted only by the word element ‘gallecs’ alone. It should be noted that it has not in any way been established that the relevant public keeps in mind only the word element ‘gallecs’ and fails to recall the figurative element comprising a church. It follows that the Board of Appeal rightly concluded that the mark applied for had to be compared as a whole.

45      Second, as regards the earlier marks, it should be noted that they all contain the word element ‘gallo’. Earlier marks Nos 2 and 4 also contain the word elements ‘azeite novo’, whereas earlier marks Nos 3 and 5 contain the name ‘Victor Guedes’. As regards the figurative elements in the earlier marks, it should be noted that earlier marks Nos 1, 3, 4 and 5 contain the figure of a cockerel, which in all the cases is larger than the word element ‘gallo’.

46      In that connection, the Court cannot accept the applicant’s argument that the visual comparison of the marks at issue must, as regards earlier marks Nos 1, 3, 4 and 5, involve only the word element ‘gallo’. It has in no way been shown that the figurative element comprising a cockerel is negligible in comparison with the word element ‘gallo’. Since in all the cases the figure of the cockerel is larger than the word element ‘gallo’, it cannot be held that the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect, does not keep that figure in mind.

47      As regards earlier mark No 2, the Board of Appeal acknowledged that the word element ‘gallo’ was dominant in light of the descriptive nature of the other word elements making up that mark.

48      The Board of Appeal cannot therefore be criticised for finding that earlier marks Nos 1, 3, 4 and 5 had to be compared as a whole, whereas only earlier mark No 2 was dominated by the word element ‘gallo’.

49      As regards the applicant’s argument that the marks at issue are similar, since they share the group of letters ‘gall’ and the first part of the word element attracts the consumer’s attention the most, the Court does not consider that such facts show that the marks at issue are similar. It follows from the foregoing considerations that the marks at issue, when considered as a whole from a visual point of view, contain significant differences.

50      Accordingly, in the light of the significant differences between the signs at issue, the Board of Appeal was entitled to conclude that visually those signs were not similar.

51      Second, as regards the phonetic comparison of the marks at issue, the applicant states that the different pronunciation of the marks at issue is not relevant because they have in common the same initial part, that is to say the element ‘gall’.

52      In that connection, it should be noted that, even if the beginning of a word element generally plays an essential role, in the present case the difference in pronunciation resulting from the endings of the word elements ‘gallo’ and ‘gallecs’ is significant. Taking into account the low-pitched sound of the letter ‘o’ and the high-pitched and harsh sound of the group of letters ‘ecs’, the mark applied for and the earlier marks are pronounced completely differently.

53      The Board of Appeal did not therefore err in finding that the signs at issue are pronounced differently.

54      Third, as regards the conceptual comparison of the marks at issue, the Court cannot accept the applicant’s arguments based on the common religious aspect of the figurative elements and on the result of an internet search. The Court considers that for the relevant public, which purchases foodstuffs such as olive oil, fruit or vegetables, the figure of the church on the mark applied for has nothing in common with the figure of the cockerel on earlier marks Nos 1, 3, 4 and 5. On the contrary, the various figurative elements tend to enable the relevant public to distinguish between the signs at issue. As regards the result of the Internet search carried out using the general terms ‘galo’ and ‘igreja’ (‘cockerel’ and ‘church’), it cannot be concluded on the basis of that search that the marks at issue are similar.

55      Consequently, the applicant has been unable to rebut the Board of Appeal’s conclusion that there were significant differences between the signs at issue visually, phonetically and conceptually.

56      In the light of all of the foregoing, it must be held that the signs at issue are not similar.

57      Since in the present case one of the conditions necessary in order to establish that there is a likelihood of confusion pursuant to Article 8(1)(b) of Regulation No 40/94 has not been fulfilled, namely that the marks at issue must be identical or similar, it must be found that there is no likelihood of confusion between those marks.

58      The applicant’s arguments based on the identical nature of, or similarity between, the goods and on the enhanced distinctiveness of the GALLO mark cannot rebut that finding.

59      First, it is settled case-law that the existence of 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 that are the subject of the application for registration are identical or similar to those in respect of which the earlier mark has been registered. Those conditions are cumulative (see Case C‑57/08 P Gateway v OHIM of 11 December 2008, not published in the ECR, paragraph 45 and the case-law cited). Lack of similarity of the marks at issue cannot, in the context of a global assessment of the likelihood of confusion, be offset by the fact that the goods covered are identical or similar, since the fact that the goods are identical or similar is not sufficient to support the finding that there is a likelihood of confusion (see, to that effect, Case T‑112/06 Inter-Ikea v OHIM – Waibel (idea) [2008] ECR I-0000, paragraph 83 and the case‑law cited).

60      Second, although it is settled case-law that the more distinctive the earlier mark, the greater the likelihood of confusion (SABEL, cited in paragraph 33 above, paragraph 24, and Canon, cited in paragraph 30 above, paragraph 18), it should be emphasised that a likelihood of confusion presupposes that the signs at issue are identical or similar.

61      Thus, far from giving rise itself to a likelihood of confusion, the reputation of a mark is a factor which must be taken into account when determining whether the similarity between the signs or between the goods and services is sufficient to give rise to a likelihood of confusion (see, to that effect, Canon, cited in paragraph 30 above, paragraphs 22 and 24, and Case T‑110/01 Vedial v OHIM – France Distribution (HUBERT) [2002] ECR II‑5275, paragraph 65). As familiar as the earlier marks may be in the present case, there are important differences enabling the consumers concerned to distinguish clearly the mark applied for from the earlier marks.

62      In the light of all of the foregoing, the Board of Appeal was correct to find that there was no likelihood of confusion between the marks in question.

63      It follows from the above that the plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94 must be dismissed as unfounded.

 The second plea in law, alleging infringement of Article 8(5) of Regulation No 40/94

–       Arguments of the parties

64      The applicant submits that the requirements for the application of Article 8(5) of Regulation No 40/94 are not cumulative.

65      First, regarding the harm to the distinctive character of the earlier mark, the applicant relies on the reputation the trade mark GALLO enjoys in Portugal and elsewhere. In its submission, the distinctive signs at issue, GALLO and Gallecs, reproduce the characteristic and distinctive element of the earlier mark. The use of the Gallecs mark for olive oils is detrimental to the distinctive character of the GALLO mark. The risk of dilution is substantial, insofar as the goods concerned belong to the same type, especially since they are usually prepared together.

66      Second, regarding the harm to reputation, the applicant refers to the distinctive character of the earlier mark. The goods covered by the mark applied for are everyday goods, namely foodstuffs. However, it is possible that the goods marketed under the mark applied for may not be of the same quality as the goods sold under the GALLO mark and thereby harm the reputation of that earlier trade mark.

67      Third, as regards the possibility of obtaining an unfair advantage from the distinctive character or the reputation of the earlier mark, the applicant states that the link between the goods covered by the marks at issue could create, in the mind of the consumer, an association between those goods. That would make it easier for the mark applied for to penetrate the market because of the reputation of the earlier mark, thus minimising the risk and costs involved in introducing a totally unknown mark to the market, and thereby conferring an unfair advantage.

68      OHIM contends that that plea in law is inadmissible on the ground that it changes the subject-matter of the proceedings before the Board of Appeal. Furthermore, OHIM denies that the arguments put forward by the applicant are well founded.

–       Findings of the Court

69      OHIM contends that the second plea in law, alleging infringement of Article 8(5) of Regulation No 40/94, is inadmissible, on the ground that it changes the subject-matter of the proceedings before the Board of Appeal, in breach of Article 135(4) of the Rules of Procedure.

70      In the present case, the Court considers that, in the interests of procedural economy, the merits of that plea in law raised by the applicant must be examined at the outset, without ruling beforehand on its admissibility, the plea being in any event, and for the reasons set out below, wholly unfounded (see, to that effect, Case C‑23/00 P Council v Boehringer [2002] ECR I‑1873, paragraphs 51 and 52; Case C‑233/02 France v Commission [2004] ECR I‑2759, paragraph 26; and Case T‑65/04 Nuova Gela Sviluppo v Commission of 27 June 2007, not published in the ECR, paragraph 28).

71      It should be recalled that, under Article 8(5) of Regulation No 40/94, ‘upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark’.

72      Therefore, it is apparent from the wording of Article 8(5) of Regulation No 40/94 that its application is subject to the following three conditions: first, that the marks at issue are identical or similar; secondly, that the earlier mark cited in opposition has a reputation; and, thirdly, that there is a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Although the third condition contains two alternatives, the three conditions are cumulative and the failure to satisfy one of them is sufficient to render that provision inapplicable (Case T‑67/04 Spa Monopole v OHIM – Spa‑Finders Travel Arrangements (SPA‑FINDERS) [2005] ECR II‑1825, paragraph 30, and Case T‑215/03 Sigla v OHIM – Elleni Holding (VIPS) [2007] ECR II‑711, paragraph 34).

73      In the present case, it is clear from the consideration of the first plea in law (see paragraphs 37 to 56 above) that the marks in question are not similar. Therefore, the first condition for the application of Article 8(5) of Regulation No 40/94 is not satisfied, namely that the marks at issue must be identical or similar.

74      Since the conditions for the application of Article 8(5) of Regulation No 40/94 are cumulative, that plea must therefore be rejected and there is no need to examine the other conditions laid down by that provision (see, to that effect, Case T‑434/05 Gateway v OHIM – Fujitsu Siemens Computers (ACTIVY Media Gateway) of 27 November 2007, not published in the ECR, paragraph 61, upheld on appeal in Gateway v OHIM, cited in paragraph 59 above, paragraph 64).

75      Accordingly, the action must be dismissed in its entirety.

 Costs

76      Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by OHIM.

On those grounds,

THE COURT OF FIRST INSTANCE (Eighth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Victor Guedes – Indústria e Comércio SA to pay the costs.

Martins Ribeiro

Papasavvas

Dittrich

Delivered in open court in Luxembourg on 11 June 2009.

[Signatures]