Order of 3 Jun 2009, C-394/08 (Zipcar), ECLI:EU:C:2009:334.

ORDER OF THE COURT (Fifth Chamber)

3 June 2009 (*)

(Appeal – Community trade mark – Article 8(1)(b) of Regulation (EC) No 40/94 – Word mark ZIPCAR – Opposition by the proprietor of the national word mark CICAR)

In Case C-394/08 P,

APPEAL under Article 56 of the Statute of the Court of Justice, brought on 9 September 2008,

Zipcar Inc., established in Cambridge (United States), represented by M. Elmslie, Solicitor,

appellant,

the other party to the proceedings being:

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

defendant at first instance,

THE COURT (Fifth Chamber),

composed of M. Ileši? (Rapporteur), President of the Chamber, A. Borg Barthet and E. Levits, Judges,

Advocate General: D. Ruiz-Jarabo Colomer,

Registrar: R. Grass,

after hearing the Advocate General,

makes the following

Order

1        By its appeal, Zipcar Inc. (‘Zipcar’) asks the Court to set aside the judgment of the Court of First Instance of the European Communities of 25 June 2008 in Case T-36/07 Zipcar v OHIM – Canary Islands Car (ZIPCAR) (‘the judgment under appeal’), by which the Court of First Instance dismissed its application for annulment of the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 30 November 2006 (Case R 122/2006-2) relating to opposition proceedings between Canary Islands Car SL and Zipcar Inc. (‘the contested decision’), which had confirmed the decision of the Opposition Division to refuse, in part, the registration applied for.

 Legal context

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) is worded as follows:

‘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        According to Article 8(2) of Regulation No 40/94:

‘For the purposes of paragraph 1, “Earlier trade marks” means:

(a)      trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the Community trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

…

(ii)      trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Trade Mark Office;

…’

 Facts

4        On 17 April 2003, Zipcar filed an application at OHIM under Regulation No 40/94 for registration of a trade mark in respect of the word sign ‘ZIPCAR’.

5        Registration was sought in respect of goods and services in, inter alia, Class 39 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, corresponding to the following description: ‘[a]rrangement of travel and transportation; transportation reservation services; motor vehicle sharing services; vehicle rental; arrangement of rental of vehicles; vehicle rental reservation services; scheduling, planning, organising, managing and providing the temporary use of motor vehicles; information, advisory and consultancy services relating to the foregoing’.

6        On 6 April 2004, Canary Islands Car SL (‘Canary Islands Car’) filed notice of opposition, under Article 42 of Regulation No 40/94, to registration of the mark applied for in respect of the services referred to above. The opposition was based on the existence of the earlier word mark CICAR, registered in Spain on 21 December 1998 under number 2 130 871 in respect of services in Class 39 of the Nice Agreement described as ‘vehicle rental reservation services’. The ground relied on in support of the opposition was the existence of a likelihood of confusion as referred to in Article 8(1)(b) of Regulation No 40/94.

7        By decision of 18 November 2005, the Opposition Division of OHIM allowed the opposition on the grounds, essentially, that the marks were similar and that the services concerned were identical. On 18 January 2006, Zipcar brought an appeal against that decision.

8        By the contested decision, the Second Board of Appeal of OHIM dismissed that appeal. In essence, the Board first of all took the view that the relevant public was the average Spanish consumer. It then stated that the services covered by the mark sought to be registered and those covered by the earlier mark were, as regards some of those services, identical or at least very similar, and, as regards others, not materially different. Lastly it observed that, while the marks were not visually similar and had no conceptual content, they were very similar phonetically and that, since the majority of car rental contracts were entered into over the telephone, it was the phonetic aspect which was critical in the present case.

 The judgment under appeal

9        By application lodged at the Registry of the Court of First Instance on 12 February 2007, Zipcar brought an action for annulment of the contested decision. By the judgment under appeal, the Court dismissed the application.

10      In paragraphs 15 to 17 of the judgment under appeal, the Court first of all dismissed the objection raised by Zipcar at the hearing that some of the arguments advanced by OHIM in its response to notice of the application at first instance (‘OHIM’s response’) were new by comparison with those submitted during the administrative procedure and, therefore, inadmissible.

11      In that regard, the Court stated in paragraph 15 of the judgment under appeal that the review of the legality of decisions of the Boards of Appeal which it is required to undertake pursuant to Article 63(2) of Regulation No 40/94 must be carried out, under Article 74, in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal. It added, in paragraph 16 of the judgment, that it is clear from Article 135(4) of the Rules of Procedure of the Court of First Instance that the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal.

12      Nevertheless, in paragraph 17 of the judgment under appeal, the Court found that, in the present case, the arguments set out in OHIM’s response are restricted to giving examples of points contained in the contested decision or to commenting on matters of common knowledge. It concluded from this that those arguments cannot be regarded as new.

13      The Court went on to rule in paragraphs 26 to 51 of the judgment under appeal that the single plea in law raised by Zipcar, alleging an infringement of Article 8(1)(b) of Regulation No 40/94, is unfounded.

14      After recalling the case-law concerning the likelihood of confusion with an earlier trade mark, the Court, first of all, found in paragraphs 32 and 33 of the judgment under appeal that the contested decision correctly defined the relevant public as consisting of average consumers of everyday goods. It thus rejected Zipcar’s argument that the relevant public in the present case consists of persons who hire a vehicle for tourist or business purposes and who are relatively affluent, since car rental is a ‘luxury’ service. In that regard, the Court held that, even though a car may be hired for tourist or business purposes, the fact remains that anyone may find it necessary to hire a car and, moreover, car rental cannot be regarded as the preserve of affluent members of the public.

15      In paragraph 34 of the judgment under appeal, the Court ruled, inter alia, as follows:

‘… the Board of Appeal was correct to hold that the relevant public was not English-speaking. That conclusion must stand even if it is accepted that in certain regions of Spain, such as the Canary Islands, English is commonly spoken or that some Spanish consumers have knowledge of English. For the purposes of defining the relevant public, account must be taken of the average consumer over the whole territory of the Member State concerned, which in the present case is Spain. Accordingly, the relevant public in this case is a Spanish-speaking public which has no particular knowledge of English.’

16      Second, the Court analysed, in paragraphs 35 to 39 of the judgment under appeal, the similarity between the services covered by the trade mark sought to be registered and those covered by the earlier mark, concluding that they ‘are in part identical, in part very similar, and in part not materially different’.

17      Third, in paragraphs 40 to 46 of the judgment under appeal, the Court considered the similarity between the signs at issue, ruling that, while they are not similar as regards the visual aspect, they are, on the other hand, very similar phonetically.

18      In that regard, the Court held in paragraph 42 of the judgment under appeal that:

‘In the present case, the average Spanish-speaking consumer will not perceive ZIPCAR as an English word, since the first syllable (“zip”) is not an English word which is generally known by that consumer. Besides, even on the assumption that the average Spanish-speaking consumer recognises the foreign origin of the words “zip” and “car”, there is no reason to think that he will pronounce ZIPCAR according to the rules of English pronunciation. It is a fortiori very unlikely that the average consumer in Spain will pronounce the term “cicar” in the English way, when any perception by him of its first syllable as being the acronym of the English name for the Islas Canarias is a matter of chance, particularly so when the Spanish acronym of the Canary Islands is “IC”.’

19      Having also noted, in paragraph 43 of the judgment under appeal, that, according to the rules of pronunciation of ordinary Spanish, the two marks are pronounced in a manner that is very similar, if not almost identical, the Court held in paragraph 44 of the judgment that ‘[t]hat conclusion remains valid even on the assumption that the average Spanish consumer recognises the English word “car” in the conflicting marks. Whether he pronounces that word according to the rules of Spanish or English pronunciation, it will, in respect of the two conflicting signs, be pronounced in the same way’.

20      As regards whether the signs at issue are conceptually similar, the Court confirmed, in paragraph 45 of the judgment under appeal, the Board of Appeal’s assessment that no conceptual comparison can be made in that respect, since the signs are composed of terms which do not exist in Spanish and which therefore have no conceptual content for the relevant public in this case. The Court held, moreover, that the average Spanish-speaking consumer’s knowledge of English cannot be regarded as sufficiently extensive and sophisticated to enable him to recognise the evocative meaning relied on by Zipcar. In paragraph 46 of the judgment under appeal, the Court stated that, even on the assumption that an average Spanish consumer is able to recognise, in those signs, the English word ‘car’, the effect of that common element would undoubtedly be that the marks become conceptually closer, notwithstanding the limited distinctiveness of that element in relation to the services in question.

21      Fourth, the Court held in paragraph 50 of the judgment under appeal that the Board of Appeal had been fully entitled to conclude that there was a likelihood of confusion.

22      In so doing, the Court first of all dismissed, in paragraph 47 of the judgment under appeal, Zipcar’s argument that the relevant public is particularly attentive because of the nature of the services covered in the present case, taking the view that there was no basis for the inference that the degree of attention of the relevant public is particularly high when a car rental supplier is being chosen. In paragraph 48 of the judgment, it went on to find that the earlier mark CICAR will not be perceived by the relevant public as being the abbreviation of the phrase ‘Canary Islands car’, thereby dismissing Zipcar’s argument that, for that reason and on account of a lack of distinctiveness, that mark had limited protection.

23      Finally, in paragraph 49 of the judgment under appeal, the Court ruled as follows:

‘While there is no doubt that the services in question may be chosen by sight, it is equally undeniable that a not insignificant proportion of car rental contracts are negotiated orally. Moreover, on any view of the matter, it must be pointed out that car rental suppliers are recommended and chosen orally in a significant number of cases. Consequently, while it is true that the potential customer of the services in question may encounter the visual representation of the mark first, the phonetic element may play a decisive role in his choosing the services in question, in particular as regards services, amongst those covered by the mark applied for, which are not limited to car rental in the strict sense.’

24      In paragraph 51 of the judgment under appeal, the Court concluded that the single plea in law raised before it, alleging an infringement of Article 8(1)(b) of Regulation No 40/94, was unfounded.

 Forms of order sought by the parties

25      Zipcar claims that the Court of Justice should set aside the judgment under appeal, remit the application for registration to OHIM to allow it to proceed and order OHIM to pay the costs.

26      OHIM contends that the appeal should be dismissed and Zipcar ordered to pay the costs.

 The appeal

27      Zipcar advances two grounds of appeal, alleging an improper extension of the factual and legal context of the review of the legality of the contested decision and an infringement of Article 8(1)(b) of Regulation No 40/94. The latter ground of appeal is in two parts. In the first part, it is alleged that the Court of First Instance defined the relevant public incorrectly, and, in the second part, Zipcar submits that the Court erred in law in its assessment of the likelihood of confusion.

28      Under Article 119 of the Rules of Procedure, where an 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 in whole or in part, without opening the oral procedure.

 The first ground of appeal, alleging an improper extension of the factual and legal context of the review of the legality of the contested decision

 Arguments of the parties

29      By its first ground of appeal, Zipcar submits that the Court changed the subject-matter of the proceedings before the Board of Appeal of OHIM and took account of facts and matters which had the effect of extending the factual and legal context of the dispute before OHIM.

30      According to Zipcar, the Court wrongly relied upon the arguments raised for the first time in OHIM’s response, in particular those concerning the characteristics of the relevant consumers, the aspects of the phonetic similarity between the trade mark sought to be registered and the earlier mark, and the manner in which car rental services are chosen by the relevant consumers.

31      By proceeding in this way and, in particular, by concluding in paragraph 17 of the judgment under appeal that those arguments could be taken into account because they were restricted to giving examples of points contained in the contested decision or to commenting on matters of common knowledge, the Court of First Instance erred as to the facts and the law.

32      Zipcar submits specifically that, since Canary Islands Car did not intervene in the proceedings before the Court of First Instance, the evidence stands as submitted in relation to the opposition to registration, and therefore the role of OHIM in this appeal should have been to explain the thinking of the Board of Appeal, not to defend the cause of the proprietor of the earlier mark by raising arguments that were not part of the evidence or matters adduced by that proprietor. As a result of the approach adopted by the Court of First Instance, the procedure was unfair, given that there was no procedure enabling Zipcar to respond by submitting appropriate evidence in reply.

33      Furthermore, the Court was wrong in principle to identify as ‘common knowledge’ the arguments advanced for the first time in OHIM’s response. First of all, it was clear that these matters were highly contentious and that their determination by the Court would require suitable evidence. Next, none of the Members of the Court of First Instance or the parties’ lawyers was Spanish-speaking. Finally, the facts and matters advanced by OHIM in the appeal before the Court of First Instance were not included in the submissions or evidence filed by Canary Islands Car.

34      Zipcar further submits that, in the event that it is necessary for the Court of First Instance to undertake an enquiry before taking judicial notice of a fact because it is not so notorious or of such common knowledge that it needs no proof, it is procedurally unfair for the results of that enquiry not to be shared with the parties and for the parties not to be presented with an opportunity to make appropriate submissions upon it.

35      According to OHIM, the arguments advanced in its response were addressed both by the parties during the administrative procedure and by the contested decision of which those arguments constitute the backbone. Furthermore, by considering questions such as the likely pronunciation or understanding of the word signs, the degree of sophistication of the consumer and the way in which the relevant transactions are concluded, OHIM did nothing more than reply to the points raised in the application for annulment, which fell squarely within the subject-matter of the dispute from the very beginning. In doing so, OHIM exercised its legitimate right to be heard and to defend the decision of the Board of Appeal.

36      Moreover, OHIM contends that, even if those arguments, or certain aspects thereof, had not been raised previously, the Board of Appeal nevertheless had to analyse them, as that examination is necessary for the purposes of correctly assessing the likelihood of confusion. In addition, it is clear that OHIM was not obliged to support with ‘evidence’ statements on matters that were obvious, or at least easily and objectively verifiable, such as the meaning of terms, the phonetic rules of the Spanish language or the process to be followed when renting a car in everyday life.

 Findings of the Court

37      By the line of argument set out in support of its first ground of appeal, Zipcar seeks to challenge the Court’s assessment in paragraph 17 of the judgment under appeal, on the basis of which the Court held that the arguments advanced in OHIM’s response were restricted to giving examples of points contained in the contested decision or to commenting on matters of common knowledge, and could not, therefore, be regarded as new.

38      In that regard it must, first of all, be held that the Court of First Instance does not err in law when it holds that arguments put forward by OHIM before the Court of First Instance, which are restricted to giving examples of points contained in a decision that is the subject-matter of the action, should not be categorised as ‘new’. Nor, moreover, is the taking into account of such arguments by the Court of First Instance capable of changing the subject-matter of the proceedings before the Board of Appeal of OHIM.

39      In so far as Zipcar claims that such a finding by the Court of First Instance is factually inaccurate, it follows from settled case-law that the Court of Justice has no jurisdiction to establish the facts or, in principle, to examine the evidence which the Court of First Instance accepted in support of those facts. Provided that the evidence has been properly obtained and the general principles of law and the rules of procedure in relation to the burden of proof and the taking of evidence have been observed, it is for the Court of First Instance alone to assess the value which should be attached to the evidence produced to it. Save where the clear sense of the evidence has been distorted, that appraisal does not therefore constitute a point of law which is subject as such to review by the Court of Justice (Case C-304/06 P Eurohypo v OHIM [2008] ECR I-3297, paragraph 33 and case-law cited).

40      In that regard, it should be recalled that there is distortion of the clear sense of the evidence where, without recourse to new evidence, the assessment of the existing evidence appears to be clearly incorrect (Case C-229/05 P PKK and KNK v Council [2007] ECR I-439, paragraph 37; Case C-326/05 P Industrias Químicas del Vallés v Commission [2007] ECR I-6557, paragraph 60; and Eurohypo v OHIM, paragraph 34).

41      In the present case, it must be noted that Zipcar has not relied in support of its first ground of appeal on any argument intended specifically to demonstrate that the Court of First Instance made an assessment of the evidence submitted to it that was clearly incorrect, in order to reach the conclusion set out in paragraph 17 of the judgment under appeal. In particular, Zipcar has not even attempted to demonstrate that, contrary to the Court’s findings, the arguments concerned were not restricted to giving examples of points contained in the contested decision.

42      Next, as regards Zipcar’s criticism of the Court’s finding that those arguments gave examples, in part, of facts that were well known, it should be borne in mind that the various bodies of OHIM are not obliged to establish in their decisions the accuracy of facts which are well known. It also follows from the case-law of the Court of Justice that the finding, by the Court of First Instance, as to whether the facts on which the Board of Appeal of OHIM has based its decision are well known or not is a factual assessment which, save where the facts or evidence are distorted, is not subject to review by the Court of Justice on appeal (see Case C-25/05 P Storck v OHIM [2006] ECR I-5719, paragraphs 51 and 53, and Case C-273/05 P OHIM v Celltech [2007] ECR I-2883, paragraphs 39 and 45). Moreover, the Court of First Instance was entitled to hold that the arguments put forward by OHIM at the stage of the appeal, which are restricted to commenting on matters which are common knowledge, cannot be regarded as new.

43      Finally, in so far as Zipcar means to submit by its first ground of appeal that there has been an infringement of the rights of the defence, suffice it to point out that the Court of Justice has already held that an applicant for a trade mark against whom OHIM relies on such well-known facts may challenge their accuracy before the Court of First Instance (see Storck v OHIM, paragraph 52). Furthermore, it should be noted that, as far as the arguments set out in OHIM’s response are concerned, Zipcar had the opportunity to challenge these both by applying for permission to submit a rejoinder and at the hearing before the Court of First Instance.

44      It follows from the foregoing that the first ground of appeal is, in part, clearly inadmissible and, in part, clearly unfounded.

 The second ground of appeal, alleging an infringement of Article 8(1)(b) of Regulation No 40/94

 The first part of the second ground of appeal

–       Arguments of the parties

45      By the first part of its second ground of appeal, Zipcar submits that the Court of First Instance was wrong to hold, in paragraph 34 of the judgment under appeal, that the relevant public must be regarded as not English-speaking, ‘even if it is accepted that in certain regions of Spain, such as the Canary Islands, English is commonly spoken or that some Spanish consumers have knowledge of English’. That finding constitutes an error in law, because it effectively asserts that, in assessing the linguistic capacity and understanding of the average consumer in any particular case, it is sufficient to determine the main or primary language of the Member State in which the earlier right subsists, without having regard to other facts which are relevant to determining the nature of the relevant consumer.

46      By holding in paragraph 34 of the judgment under appeal that, for the purposes of defining the relevant public, account must be taken of the average consumer over the whole territory of the Member State concerned, and that therefore the relevant public in this case is a Spanish-speaking public which has no particular knowledge of English, the Court failed to draw the appropriate inferences from its finding that English is spoken in certain regions of the Kingdom of Spain and by certain Spanish consumers. Consequently, it did not undertake a global assessment of the likelihood of confusion. Had it done so, it would have had to conclude that the likelihood of phonetic confusion was considerably reduced because the relevant consumers speak English to some extent.

47      OHIM contends that the first part of the second ground of appeal is inadmissible in so far as Zipcar seeks to challenge a finding of the Court of First Instance that is factual in nature, and, moreover, it is clearly unfounded. In that regard it relies, in essence, on the wording of Article 8(1)(b) and (2)(a)(ii) of Regulation No 40/94 and on the case-law of the Court of Justice and of the Court of First Instance concerning the definition of the relevant public.

–       Findings of the Court

48      According to Article 8(1)(b) and (2) of Regulation No 40/94, where an earlier trade mark upon which its proprietor relies in support of his opposition is a national 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 of the Member State in which the earlier trade mark is protected or registered.

49      For a Community trade mark to be refused registration under Article 8(1)(b) of Regulation No 40/94, the likelihood of confusion does not have to exist in the whole territory of the Member State concerned and in all its linguistic areas. In fact, an earlier national mark can be relied on in opposition proceedings against any application for registration of a Community trade mark which would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the territory in which the earlier trade mark is protected (see, by analogy, Case C-514/06 P Armacell v OHIM [2008] ECR I-0000, paragraphs 56 and 57).

50      It follows from the foregoing that the Court of First Instance did not err in law in holding in paragraph 34 of the judgment under appeal that, for the purposes of defining the relevant public, account must be taken of the average consumer over the whole territory of the Member State in which the earlier mark is protected, in this case, the Kingdom of Spain. Even on the assumption that English is spoken in certain Spanish regions and by certain consumers and that, for them, the likelihood of confusion is reduced owing to their linguistic knowledge, the opposition by the proprietor of that trade mark is nevertheless justified if, outside those regions and for the non-English-speaking average consumer, there is a likelihood of confusion between the earlier mark and the trade mark sought to be registered.

51      In so far as Zipcar submits that the Court wrongly concluded that the average consumer in Spanish territory is Spanish-speaking and has no particular knowledge of English, it should be noted that, contrary to Zipcar’s submission, the Court did not, by that finding, in any way intend to establish an inflexible rule of law by which the average consumer would, in every case, have as his mother tongue the language that is predominant in the Member State concerned and would have no particular knowledge of another language. On the contrary, it clearly follows from paragraph 34 of the judgment under appeal that, by that finding, the Court carried out an appraisal of the facts of the case in hand.

52      However, as noted in paragraph 38 of this order, save where the clear sense of the facts and the evidence has been distorted, their appraisal does not constitute a point of law which is subject to review by the Court of Justice in the context of an appeal.

53      In so far as Zipcar meant by those allegations to plead such distortion, it must be held that, contrary to Zipcar’s submissions, the Court’s conclusion that, even if part of the relevant public does have knowledge of English, that is not the case as far as the average consumer of the services in question is concerned, cannot be described as arbitrary or illogical.

54      Furthermore, it must be noted that, in its assessment of the similarity of the signs, in particular in paragraphs 44 and 46 of the judgment under appeal, the Court of First Instance also took into consideration the perception of the signs by consumers who have a certain knowledge of English in concluding that the outcome of its analysis remained the same.

55      Accordingly, the first part of the second ground of appeal must be dismissed as being, in part, clearly inadmissible and, in part, clearly unfounded.

 The second part of the second ground of appeal

–       Arguments of the parties

56      By the second part of the second ground of appeal, Zipcar submits that the Court should have drawn the appropriate inferences from the finding in paragraph 39 of the judgment under appeal that the services covered by the trade mark application and those covered by the earlier trade mark are ‘in part identical, in part very similar, and in part not materially different’ and assessed the likelihood of confusion for each of those categories. By failing to carry out that analysis, it erred in law. Zipcar considers that, if the Court had performed the analysis which, in Zipcar’s view, the Court was required to do, it would have concluded that the likelihood of confusion was considerably reduced in respect of goods and services that were less similar, and, accordingly, should have allowed the application for registration in respect of those goods and services to proceed.

57      According to OHIM, the Court did not make any error of law in its assessment of the existence of a likelihood of confusion. The Court’s reasoning in that regard is valid and applies equally to all of the services concerned, regardless of the different degrees of similarity between the services corresponding to the earlier mark and those covered by the trade mark sought to be registered. The Court’s conclusions are, in OHIM’s view, entirely consistent with its analysis of the facts, and the grounds of the judgment comply with the legal rules in force.

–       Findings of the Court

58      As a preliminary point, it must be noted, as did the Court of First Instance in paragraphs 28 to 30 of the judgment under appeal, that the likelihood of confusion on the part of the public must be assessed globally, taking into account all the relevant factors of the case in hand (see Case C-206/04 P Mülhens v OHIM [2006] ECR I-2717, paragraph 18, and the judgment of 26 March 2009 in Case C-21/08 P Sunplus Technology v OHIM, paragraph 27).

59      In order to assess the degree of similarity between the marks concerned, it is necessary to determine the degree of visual, aural or conceptual similarity between them and, where appropriate, to determine the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed (see Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 27, and order of 27 April 2006 in Case C-235/05 P L’Oréal v OHIM, paragraph 40).

60      In order to assess the similarity of the products or services concerned, all the relevant features of the relationship between those products or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (see Case C-416/04 P Sunrider v OHIM [2006] ECR I-4237, paragraph 85 and case-law cited).

61      In the present case, in paragraphs 35 to 39 of the judgment under appeal, the Court assessed the similarity between the services in question and concluded that they ‘are in part identical, in part very similar, and in part not materially different’. With regard to the second of those three categories, the Court took the view that the services covered by the trade mark sought to be registered are very similar to those covered by the earlier mark, given that, essentially, they relate to the rental of vehicles. As far as the third category of services is concerned, the Court found that they are not materially different since they may come from the same undertakings and are complementary to the rental of vehicles.

62      After its examination of the similarity between the earlier trade mark and the trade mark sought to be registered, which revealed that they were phonetically very similar, the Court, in paragraphs 47 to 49 of the judgment under appeal, dismissed the arguments which Zipcar put forward to demonstrate that, notwithstanding those similarities, there was no likelihood of confusion. Thus, the Court found, first of all, that there is no basis for the inference that the degree of attention of the relevant public is particularly high when a car rental supplier is being chosen. It then dismissed Zipcar’s argument that the earlier mark is not distinctive, implying that it has limited protection. Finally, the Court held that, while it is true that the potential customer of the services in question may encounter the visual representation of the mark first, the phonetic element may play a decisive role in his choosing the services in question, in particular as regards those services, amongst those covered by the mark sought to be registered, which are not limited to car rental in the strict sense.

63      It is clear from those findings that the Court considered the likelihood of confusion in respect of all of the services in question which, according to its own finding, either relate directly, or are complementary, to the rental of vehicles. It therefore held that there is a likelihood of confusion even in respect of services which are not identical, in view of the strong phonetic similarity between the marks.

64      In so far as Zipcar intended by its arguments to plead the inaccuracy of the Court’s conclusion, suffice it to recall that, save where the clear sense of the facts and evidence produced to the Court has been distorted, the Court’s appraisal of those facts and that evidence does not constitute a point of law which is subject to review by the Court of Justice on appeal.

65      It follows from the foregoing that the second part of the second ground of appeal advanced by Zipcar must also be dismissed as clearly unfounded or, as the case may be, clearly inadmissible and, in consequence, the appeal must be dismissed in its entirety.

 Costs

66      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 Zipcar to be ordered to pay the costs and Zipcar has been unsuccessful, it must be ordered to pay the costs of the appeal.

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

1.      The appeal is dismissed.

2.      Zipcar Inc. is ordered to pay the costs.

[Signatures]

* Language of the case: English.