CJEU Order C-532/10 adp Gauselmann

ORDER OF THE COURT (Fifth Chamber)

29 June 2011 (*)

(Appeal – Community trade mark – Regulation (EC) No 40/94 – Article 8(1)(b) – Likelihood of confusion – Figurative mark Archer Maclean’s Mercury – Opposition by the proprietor of the national word mark Merkur)

In Case C-532/10 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 12 November 2010,

adp Gauselmann GmbH, established in Espelkamp (Germany), represented by P. Koch Moreno, lawyer,

appellant,

the other party to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant at first instance,

THE COURT (Fifth Chamber),

composed of J.-J. Kasel, President of the Chamber, A. Borg Barthet and M. Ileši? (Rapporteur), Judges,

Advocate General: P. Mengozzi,

Registrar: A. Calot Escobar,

after hearing the Advocate General,

makes the following

Order

1 By its appeal, adp Gauselmann GmbH (‘Gauselmann’) seeks to have set aside the judgment of the General Court of the European Union of 9 September 2010 in Case T-106/09 adp Gauselmann v OHIM – Maclean (Archer Maclean’s Mercury) (‘the judgment under appeal’), by which the General Court dismissed its action brought against the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 12 January 2009 (Case R 1266/2007-1), relating to opposition proceedings between Gauselmann and Archer Maclean (‘the contested decision’).

Legal context

2 Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. Nevertheless, in view of the time at which the events occurred, the present case remains governed by Regulation No 40/94.

3 Article 8(1)(b) and (2)(a) of Regulation No 40/94 provided:

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

(a) if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected;

(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.

2. 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 The facts which gave rise to the dispute are summarised as follows in paragraphs 1 to 11 of the judgment under appeal:

‘1 On 15 February 2005, Archer Maclean filed an application for registration of a Community trade mark with [OHIM] pursuant to [Regulation No 40/94].

2 Registration as a mark was sought for the following figurative sign:

3 The goods in respect of which registration was sought on 15 February 2005 and which were subject to a restriction following Archer Maclean’s application of 24 November 2005 are inter alia in Classes 9 and 28 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended [“the Nice Agreement”], and correspond, for each of those classes, to the following description:

– Class 9: “Computer game programs; game cartridges; cassettes and circuit boards containing game programs for use with hand-held or arcade video game machines”;

– Class 28: “Arcade video game machines; coin, card or counter operated arcade game machines and amusement apparatus”.

…

6 On 28 November 2005, the applicant, [Gauselmann], filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 … against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

7 The opposition was based on the earlier word mark Merkur, which was registered in Germany on 18 February 2002 and covers inter alia goods in Classes 9 and 28 corresponding to the following description:

– Class 9: “Electrotechnical and electronic apparatus, devices, instruments and machines (included in Class 9); automatic machines providing services requiring payment; automatic machines, operated by coins, banknotes, tokens of value, magnetic cards, microprocessor chip devices or tickets; electric and electronic machines and apparatus for game, amusement and entertainment purposes; Gaming and entertainment apparatus; coin and token-operated entertainment machines; children entertainment machines and parts of these goods; betting apparatus; mechanisms for coin-operated apparatus including coin switching devices, banknote testing sets, money-changing apparatus; aforesaid goods also in connection with money and token-operated entertainment machines, gaming machines and sports machines; video game machines and instruments”;

– Class 28: “Hand-held consoles for playing electronic games”.

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

9 On 26 June 2007, the Opposition Division rejected the opposition.

10 On 8 August 2007, the applicant filed a notice of appeal with OHIM, under Articles 57 to 62 of Regulation No 40/94…

11 By decision of 12 January 2009…, the First Board of Appeal of OHIM dismissed the appeal. In particular, it found that the relevant public, which was made up, in German territory, of average consumers belonging to the younger generation as well as of licensees or purchasers of game machines or amusement apparatus, who are normally the owners of places such as shopping malls, cafes or amusement parks, was considerably more observant, attentive and circumspect than if the goods had been everyday consumer goods. Furthermore, the Board of Appeal found that, although the goods were similar and some of them were even identical visually, the signs were similar to a limited degree and were aurally and conceptually different. Consequently, there was no likelihood of confusion between the marks at issue, even in respect of possibly identical goods.’

Procedure before the General Court and the judgment under appeal

5 By application lodged at the Registry of the General Court on 13 March 2009 Gauselmann brought an action against the contested decision. The General Court dismissed that action by the judgment under appeal.

6 In support of its action, the applicant relied on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94. It submitted that there was a likelihood of confusion between the marks at issue claiming, first, that the goods covered by those marks are identical, secondly, that the word ‘mercury’ is dominant and that the word element ‘archer maclean’s’ is ancillary in the mark applied for and, lastly, that the words ‘mercury’ and ‘merkur’ are visually, aurally and conceptually similar.

7 The General Court rejected that single plea in law as unfounded.

8 After referring, in paragraph 19 of the judgment under appeal, to the case-law on likelihood of confusion with an earlier mark, the General Court defined, in paragraph 20 of that judgment, the relevant public as made up, in German territory, ‘of consumers belonging to the younger generation who are interested in computer and video games, but also of professionals who specialise in that area and are owners of and/or operate, inter alia, shopping malls, cafes or amusement parks’. The General Court also pointed out in that regard that ‘the relevant public’s attention will necessarily be greater than for everyday consumer goods’.

9 As regards the goods which had to be taken into consideration, the General Court held, in paragraph 25 of the judgment under appeal, that the goods designated by the marks at issue were in part identical and in part similar.

10 The General Court therefore held, first, in paragraph 23 of the judgment under appeal, that the ‘coin, card or counter operated arcade game machines and amusement apparatus’ covered by the mark applied for, in Class 28 of the Nice Agreement, are identical to the ‘automatic machines, operated by coins, banknotes, tokens of value, magnetic cards, microprocessor chip devices or tickets’ and to the ‘coin and token-operated entertainment machines’ in Class 9 of that agreement, designated by the earlier trade mark. It also held that the ‘arcade video game machines’ in Class 28 of that agreement covered by the mark applied for and the ‘electric and electronic machines and apparatus for game, amusement and entertainment purposes; Gaming and entertainment apparatus’ in Class 9 of that agreement designated by the earlier mark are identical.

11 Secondly, the General Court held, in paragraph 24 of the judgment under appeal, that the ‘computer game programs; game cartridges; cassettes and circuit boards containing game programs for use with hand-held or arcade video game machines’ in Class 9 of the Nice Agreement covered by the mark applied for are similar on account of their complementarity to the ‘electric and electronic machines and apparatus for game, amusement and entertainment purposes; Gaming and entertainment apparatus; coin and token-operated entertainment machines; children entertainment machines’ and ‘hand-held consoles for playing electronic games’ in Classes 9 and 28 of that agreement designated by the earlier mark.

12 As regards the likelihood of confusion between the two marks in question, the General Court first of all rejected Gauselmann’s argument that the First Board of Appeal of OHIM should have based its decision exclusively on the dominant element ‘mercury’ in the mark applied for when comparing those marks. In that regard, the General Court gave the following ruling in paragraph 29 of the judgment under appeal:

‘In view of the characteristics of the element “mercury” connected with the size of its letters, its novel font and the specific features of the initial capital letter “M”, the importance of that element in the mark applied for cannot be disputed. However, it is not the only element which members of the relevant public will keep in their minds. The relevant public will not be able to overlook the word element “archer maclean’s”, which is clearly visible and cannot escape their attention. Consequently, since the element “archer maclean’s” is not negligible, the marks at issue must be compared on the basis of the overall impression made, without brushing aside any of their elements but according greater weight, as regards the mark applied for, to the word “mercury”. In that regard, the applicant’s argument in respect of the risks connected with the fact that the element “archer maclean’s” is the name of the company which filed the trade mark application must be rejected since, in the present case, that element is not being taken as a basis for declaring that there are differences between the marks at issue, but is merely being taken into account, among other elements, in particular the element “mercury”, in the overall comparison which must be carried out.’

13 Secondly, the General Court carried out, in paragraphs 30 to 35 of the judgment under appeal, a visual, aural and conceptual comparison of the signs at issue and stated:

‘30 First, as regards the visual comparison, it must be pointed out that the words “mercury” and “merkur”, which consist of seven and six letters respectively, have the first three letters, “m”, “e” and “r” in common, as well as the letters “u” and “r”, which occupy the fifth and sixth positions respectively in the two abovementioned words. It may therefore be deduced from those elements that there is some visual similarity between the marks at issue.

31 However, the words “mercury” and “merkur” differ by reason of the letters “c” and “k”, which are positioned in the middle of those words, and the letter “y”, which is positioned at the end of the element in the mark applied for. The presence of the element “archer maclean’s”, consisting of 14 letters, which contributes visually to the overall impression made by the mark applied for and which members of the relevant public will keep in their minds, further weakens the visual similarity of the marks at issue.

32 The specific figurative features of the element “mercury” are not negligible. However, there is no need to take them into consideration since, as the earlier mark is a word mark, there is nothing to prevent it from being used in different scripts, even in a form comparable to that used by the mark applied for...

33 Secondly, as regards the aural comparison, although it is true that the sign Merkur features in the word “mercury”, the fact none the less remains that those words are distinguished by the final letter “y”, which appears only in the word “mercury”. Therefore, whether the words are pronounced according to English or German phonetics, their pronunciation will be different since, first, the word “merkur” consists of two syllables, while the word “mercury” consists of three syllables, and, secondly, their endings differ. Furthermore, it must be admitted that most of the relevant public, in particular the younger members of the public concerned in the present case, but probably also the professionals who specialise in the games and entertainment area, will perceive “mercury” to be an English word, with the result that it will be pronounced according to English phonetics, that is to say, differently from the word “merkur”. Therefore, even if, as the Board of Appeal found in paragraph 27 of the contested decision, the word element “archer maclean’s” is not pronounced, nevertheless, as the Board of Appeal stated in the same paragraph of that decision, the signs at issue are different aurally.

34 Thirdly, as regards the conceptual comparison, it is common ground that the relevant public will immediately perceive the different meanings of the German word “merkur”, which refers to the planet and to the Roman god of the same name. However, contrary to what the Board of Appeal stated in paragraph 28 of the contested decision, that word does not refer to the metal “mercury”, which, in German, is translated as “[Q]uecksilber”. As regards the word “mercury”, which has no meaning in German, there is no doubt that the relevant public will immediately perceive that it is an English word, which will require translation in order to be understood. Nevertheless, it is possible that some of the relevant public will not manage to translate that word and will therefore not understand its meaning. At the very most, as the Board of Appeal stated in paragraph 28 of the contested decision, that public will think it refers to a surname of English origin.

35 As regards the part of the relevant public which will understand the meanings of the word “mercury” in English, namely referring to the planet, to the Roman god and to the metal of the same name, it must be pointed out at the outset that no connection can be established between that word and the sector to which the goods at issue belong. By contrast, in view of certain figurative aspects of the sign applied for, namely the liquid appearance of the writing and the silvery grey colour, which give the impression that the word is written in mercury, it can be considered that the meaning attached to the metal will be that perceived first by the abovementioned part of the public. Since the German word “merkur” does not refer to the metal, the words in question will not be associated conceptually by that part of the relevant public. It follows that the sign applied for and the earlier sign are conceptually different. That finding can only be strengthened by the presence of the element “archer maclean’s”, which must be taken into account in the analysis.’

14 Having regard to that analysis, the General Court ultimately concluded, in paragraph 39 of the judgment under appeal, that the signs at issue were slightly similar visually and that they were different both aurally and conceptually. Consequently, the General Court held that the First Board of Appeal of OHIM had been right to find that there was no likelihood of confusion between the marks at issue and it therefore dismissed Gauselmann’s action as unfounded.

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

15 By its appeal, Gauselmann claims that the Court should:

– set aside the judgment under appeal and annul the contested decision;

– as appropriate, remit the case to OHIM, and

– order OHIM to pay the costs.

16 OHIM contends that the Court should dismiss the appeal and order Gauselmann to pay the costs.

Consideration of the appeal

17 Under Article 119 of its 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.

18 In support of its appeal, Gauselmann relies on a single ground of appeal, which is divided into four parts, alleging that the General Court infringed Article 8(1)(b) of Regulation No 40/94.

The first part of the single ground of appeal

Arguments of the parties

19 By the first part of its single ground of appeal, Gauselmann submits that the General Court erred in law because it did not properly regard the element ‘mercury’ as the dominant element in the mark applied for whereas it gave the other component of that mark, namely the words ‘archer maclean’s’ excessive importance.

20 The General Court also failed to have regard to, first, the established case-law according to which the global assessment of the likelihood of confusion of two marks must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components and, secondly, the case-law according to which the overall impression conveyed to the relevant public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components.

21 OHIM submits that the first part of the single ground of appeal is inadmissible in so far as the appellant seeks to call into question findings of a factual nature made by the General Court.

Findings of the Court

22 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. Such a likelihood of confusion includes the likelihood of association with the earlier trade mark.

23 In that regard, it is apparent from settled case-law that the existence of a 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, inter alia, Case C-120/04 Medion [2005] ECR I-8551, paragraph 27; Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 34; and Case C-498/07 P Aceites del Sur-Coosur v Koipe [2009] ECR I-7371, paragraph 46).

24 It is also apparent from settled case-law that the global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see, inter alia, Medion, paragraph 28; Case C-206/04 P Mülhens v OHIM [2006] ECR I-2717, paragraph 19; and OHIM v Shaker, paragraph 35).

25 In that regard, the Court has held 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, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see Medion, paragraph 29, and OHIM v Shaker, paragraph 41). Nevertheless, it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (see OHIM v Shaker, paragraph 42).

26 The first part of the plea put forward by Gauselmann in support of its appeal should be examined in the light of those principles.

27 In the present case, the General Court referred, in paragraph 26 of the judgment under appeal, to the case-law which is referred to in paragraphs 23 to 25 of the present order.

28 On the basis of those considerations, the General Court, in analysing the signs at issue, took the view, in paragraph 29 of the judgment under appeal, that, although the importance of the element ‘mercury’ in the mark applied for cannot be disputed, it is not the only element which members of the relevant public will keep in their minds. It added in that regard that the relevant public will not be able to overlook the word element ‘archer maclean’s’, which is clearly visible and cannot escape their attention. Consequently, the General Court held that, since the element ‘archer maclean’s’ is not negligible, the marks at issue must be compared on the basis of the overall impression made, without brushing aside any of their elements but according greater weight, as regards the mark applied for, to the word ‘mercury’.

29 It follows that, contrary to what Gauselmann claims, the General Court did base its assessment of the existence of a likelihood of confusion between the marks at issue on the criteria established by the case-law.

30 In so far as Gauselmann is seeking to call into question the manner in which the General Court weighed up those criteria, it should be noted that the analysis carried out by the General Court in that regard is factual in nature.

31 Under the second subparagraph of Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal lies on points of law only. The General Court thus has exclusive jurisdiction to find and appraise the relevant facts and assess the evidence. The appraisal of those facts and evidence does not, therefore, save where they have been distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see, inter alia, Aceites del Sur-Coosur v Koipe, paragraph 78, and Case C-254/09 P Calvin Klein Trademark Trust v OHIM [2010] ECR I-0000, paragraph 49 and the case-law cited).

32 Gauselmann has not relied upon any distortion of the facts or evidence submitted to the General Court.

33 The first part of the single ground of appeal must therefore be rejected as in part manifestly unfounded and in part manifestly inadmissible.

The second part of the single ground of appeal

Arguments of the parties

34 By the second part of the single ground of appeal, Gauselmann submits that the General Court infringed the principle that, where the goods or services are identical, there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark. According to Gauselmann, the General Court, in applying that principle, should not have taken into account the element ‘archer maclean’s’ during the assessment of the similarity of the two marks at issue.

35 Although the General Court concluded, in paragraph 29 of the judgment under appeal, that, in the present case, that element is not being taken as a basis for concluding that there are differences between the marks at issue, but is merely being taken into account, among other elements, in particular the element ‘mercury’, in the overall comparison which must be carried out, Gauselmann submits that the General Court took the element ‘archer maclean’s’ as its basis, in paragraphs 29 and 31 of the judgment under appeal, for concluding that there are visual differences between the marks at issue.

36 OHIM submits that the second part of the single ground of appeal amounts to a request to have the case re-examined by the Court and that it should therefore be declared inadmissible. In any event, it submits that that part of the plea is manifestly unfounded and that the General Court was right to reject the argument in respect of the risks connected with the fact that the element ‘archer maclean’s’ is the name of the company which filed the application for registration of the trade mark in question.

Findings of the Court

37 As regards the second part of the single ground of appeal put forward by Gauselmann, it must be borne in mind that, according to settled case-law, it follows from Article 256 TFEU, the first paragraph of Article 58 of the Statute of the Court of Justice and Article 112(1)(c) of the Rules of Procedure of the Court of Justice that an appeal must indicate precisely the contested elements of the judgment which the appellant seeks to have set aside, and also the legal arguments specifically advanced in support of the appeal. That requirement is not satisfied by an appeal which, without even including an argument specifically identifying the error of law allegedly vitiating the contested judgment, confines itself to reproducing the pleas in law and arguments previously submitted to the General Court. Such an appeal amounts in reality to no more than a request for re-examination of the application submitted to the General Court, which the Court of Justice does not have jurisdiction to undertake (Case C-352/98 P Bergaderm and Goupil v Commission [2000] ECR I-5291, paragraphs 34 and 35, and Case C-286/04 P Eurocermex v OHIM [2005] ECR I-5797, paragraph 42).

38 An appeal can, however, be based on arguments which have already been presented at first instance in order to show that, by dismissing the pleas in law and arguments presented to it by the appellant, the General Court infringed European Union law (Case C-82/98 P Kögler v Court of Justice [2000] ECR I-3855, paragraph 23), so that the points of law examined at first instance may be considered again in an appeal provided that the appellant contests the way in which the General Court interpreted or applied European Union law (Case C-210/98 P Salzgitter v Commission [2000] ECR I-5843, paragraph 43).

39 In this case, it is clear from the text of the appeal lodged at the Court that the second part of the single ground of appeal does not simply comprise a word-for-word rehearsal of the pleas in law and arguments submitted at first instance. Gauselmann indicated precisely the contested elements of the judgment of the judgment under appeal and the arguments on the basis of which it considers that the General Court’s legal assessment is incorrect.

40 In those circumstances, the second part of the single ground of appeal must be held to be admissible.

41 By that part of the plea, Gauselmann seeks, in essence, to call into question the General Court’s reasoning in paragraph 29 of the judgment under appeal, by which it rejected Gauselmann’s argument in respect of the risks connected with the fact that the element ‘archer maclean’s’ is the name of the company which filed the application for registration of the mark at issue. According to the appellant, the General Court thus erred in law in applying the principles laid down by the Court in Medion.

42 In that regard, it must be pointed out that, in paragraph 37 of Medion, the Court held that where goods or services are identical there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein.

43 That particular case-law cannot affect the obligation to carry out a global assessment of all the components of the marks at issue. It is settled case-law that the existence of a 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, inter alia, OHIM v Shaker, paragraph 34 and the case-law cited). That overall assessment of the marks at issue taking into account all of the factors relevant to the case is required even if one of the components of the mark applied for is the name of the company seeking registration of the mark (see, to that effect, order of 23 November 2010 in Case C-204/10 P Enercon v OHIM, paragraphs 23 to 26).

44 In that regard, the General Court took the view, in paragraph 29 of the judgment under appeal, that the applicant’s argument in respect of the risks connected with the fact that the element ‘archer maclean’s’ is the name of the company which filed the application for registration of the mark at issue had to be rejected since, in the present case, that element is not being taken as a basis for concluding that there are differences between the marks at issue, but is merely being taken into account, among other elements, in particular the element ‘mercury’, in the overall comparison which must be carried out.

45 It follows that the General Court did not err in law by taking the view that the element ‘archer maclean’s’ had to be taken into account in the overall comparison of the signs at issue which must be carried out.

46 The second part of the single ground of appeal must therefore be rejected as manifestly unfounded.

The third part of the single ground of appeal

Arguments of the parties

47 By the third part of the single ground of appeal, Gauselmann submits that the General Court erred in taking the view that the conceptual differences between the signs at issue could counteract the aural similarities between them.

48 The General Court acknowledged, in paragraph 34 of the judgment under appeal, that the word ‘mercury’, has no meaning in German and that it will require translation in order to be understood. It also conceded that it is possible that some of the relevant public will not manage to translate that word and will therefore not understand its meaning. Gauselmann complains that the General Court carried out, in spite of those findings, a conceptual comparison of the two marks at issue and it submits that the General Court thus failed to have regard to its own case-law that in order to counteract aural similarities between marks at least one of the marks must, from the point of view of the relevant public, have a clear and specific meaning, so that the public is capable of grasping it immediately.

49 OHIM submits that the third part of the single ground of appeal must be rejected. It maintains in that regard that the definition of the relevant public and the assessment of its degree of attentiveness are purely factual issues and are not therefore subject to review by the Court. In any event, the argument that the fact that the word ‘mercury’ has no direct meaning in German prevents a conceptual comparison of the signs is manifestly unfounded.

Findings of the Court

50 As regards the third part of the single ground of appeal, relating to the counteraction of the aural similarities by the conceptual differences, it must be stated that the appeal is, in reality, asking the Court to substitute its own assessment of the facts for that of the General Court.

51 It is sufficient to point out, in that regard, that the assessments of the General Court in paragraphs 34 and 35 of the judgment under appeal relating to the relevant public’s understanding of the meanings of the word ‘mercury’ in English and its assessments relating to the counteraction of the aural similarities are factual assessments which are not subject to review by the Court on appeal, save where they have been distorted, as was pointed out in paragraph 31 of the present order.

52 Since Gauselmann has not relied upon any distortion of the facts or evidence submitted to the General Court, the third part of the single ground of appeal must be rejected as inadmissible.

The fourth part of the single ground of appeal

Arguments of the parties

53 By the fourth part of the single ground of appeal, Gauselmann submits that the General Court failed to apply the case-law according to which it is necessary to take into account the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks when it found that the differences between the word ‘mercury’, which is the distinctive and dominant element in the mark applied for, and the word ‘merkur’, which is the symbol of the earlier mark, were sufficient to prevent the relevant public from confusing them.

54 First of all, Gauselmann submits that the General Court’s conclusions, in paragraphs 32 and 33 of the judgment under appeal, relating to the visual and aural differences between the marks at issue are manifestly incorrect.

55 Secondly, Gauselmann maintains that the General Court explained the aural differences between the words ‘mercury’ and ‘merkur’ on the basis of the incorrect presumption that the relevant public will perceive the word ‘mercury’ to be an English word and will pronounce it according to English phonetics.

56 Lastly, Gauselmann submits that the General Court erred in finding, in paragraph 35 of the judgment under appeal, that the members of the public will remember the writing and the silvery grey colour of the element ‘mercury’ in the mark applied for and that, therefore, they will perceive the meaning attached to the metal first. The General Court should have taken into account, in that regard, the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks.

57 OHIM submits that the fourth part of the single ground of appeal is manifestly unfounded. It states, first, that it is not because the General Court omitted to refer expressly to the rule that the average consumer only rarely has the chance to make a direct comparison between the different marks that the judgment under appeal is vitiated by an error in law. Secondly, OHIM submits that Gauselmann’s line of argument in support of that fourth part of the ground of appeal is exclusively based on criticism regarding the factual assessments made by the General Court.

Findings of the Court

58 As regards the fourth part of the single ground of appeal, it must be stated that the appeal is, in reality, asking the Court to substitute its own assessment of the facts for that of the General Court.

59 The General Court’s conclusions concerning the visual, aural and conceptual differences between the signs at issue and the relevant public’s perception of the marks in question, which are called into question by Gauselmann, are assessments of a factual nature.

60 As has been pointed out in paragraph 31 of the present order, an appeal lies on points of law only and the General Court thus has exclusive jurisdiction to find and appraise the relevant facts and assess the evidence, save where they have been distorted.

61 Since Gauselmann has not relied upon any distortion of the facts or evidence submitted to the General Court, the fourth part of the single ground of appeal must be rejected as inadmissible.

62 In the light of the foregoing, the appeal must be dismissed in its entirety as in part manifestly unfounded and in part manifestly inadmissible.

Costs

63 Under Article 69(2) of the Rules of Procedure, applicable to the procedure on appeal pursuant to Article 118 of those Rules, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM has applied for costs and Gauselmann has been unsuccessful, the latter must be ordered to pay the costs.

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

1. The appeal is dismissed.

2. adp Gauselmann GmbH shall pay the costs.

[Signatures]

* Language of the case: English.

Order of 29 Jun 2011, C-532/10 (adp Gauselmann - Mercury), ECLI:EU:C:2011:433.