Corte di giustizia UE n. 1432/2014

[OSCURATO:PERSONA] ([OSCURATO:PERSONA]) 20 November 2014 ( * ) (Appeal — [OSCURATO:PERSONA] trade mark — [OSCURATO:PERSONA] (EC) No 40/94 — [OSCURATO:PERSONA] 8(1)(b) — [OSCURATO:PERSONA] 8(5) — Word mark [OSCURATO:PERSONA] — [OSCURATO:PERSONA] by the proprietor of the earlier [OSCURATO:PERSONA] word mark BALLON D’OR — Relevant public — Similarity of the signs — Likelihood of confusion) [OSCURATO:PERSONA] C‑581/13 P and C‑582/13 P, [OSCURATO:PERSONA] under [OSCURATO:PERSONA] 56 of the Statute of the [OSCURATO:PERSONA] of Justice, lodged on 15 November 2013, [OSCURATO:SOCIETA], established in Boulogne-Billancourt (France), represented by P. Péters, advocaat, and T. de Haan, avocat, applicant, the other parties to the proceedings being: Office for Harmonisation in the [OSCURATO:PERSONA] ([OSCURATO:PERSONA] and Designs) ([OSCURATO:PERSONA]), represented by A. Folliard-Monguiral, acting as Agent, defendant at first instance, [OSCURATO:PERSONA], established in London ([OSCURATO:PERSONA]), represented by M. Edenborough QC, applicant at first instance, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of C. [OSCURATO:PERSONA], [OSCURATO:PERSONA] of the [OSCURATO:PERSONA], E. Jarašiūnas and C.G. Fernlund (Rapporteur), [OSCURATO:PERSONA], [OSCURATO:PERSONA]: M. Wathelet, Registrar: A. [OSCURATO:PERSONA], having regard to the written procedure, having decided, after hearing the [OSCURATO:PERSONA], to proceed to judgment without an Opinion, gives the following [OSCURATO:PERSONA] 1 By its appeals, [OSCURATO:SOCIETA] seeks to have set aside the judgments of 16 September 2013 in [OSCURATO:PERSONA] v [OSCURATO:PERSONA] — [OSCURATO:SOCIETA] ([OSCURATO:PERSONA]) , T‑448/11, EU:T:2013:456, and in [OSCURATO:PERSONA] v [OSCURATO:PERSONA] — [OSCURATO:SOCIETA] ([OSCURATO:PERSONA]) , T‑437/11, EU:T:2013:441, (collectively, ‘the judgments under appeal’), by which the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] annulled the decisions of the [OSCURATO:PERSONA] of Appeal of [OSCURATO:PERSONA] of 22 June 2011 (Case R 1432/2010-1) and of 26 May 2011 (Case R 1310/2010-1) relating to opposition proceedings between [OSCURATO:SOCIETA] and [OSCURATO:PERSONA] (collectively, ‘the contested decisions’). Legal context 2 [OSCURATO:PERSONA] (EC) No 40/94 of 20 December 1993 on the [OSCURATO:PERSONA] trade mark (OJ 1994 L 11, p. 1) was replaced by [OSCURATO:PERSONA] (EC) No 207/2009 of 26 February 2009 on the [OSCURATO:PERSONA] trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. [OSCURATO:PERSONA], in the light of the date on which the registration applications at issue were filed, the present disputes remain governed by [OSCURATO:PERSONA] 40/94. 3 [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94 was 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.’ 4 [OSCURATO:PERSONA] 8(5) of that regulation provided: ‘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 [OSCURATO:PERSONA] trade mark, the trade mark has a reputation in the [OSCURATO:PERSONA] and, in the case of an earlier national trade mark, the trade mark has a reputation in the [OSCURATO:PERSONA] 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.’ Background to the disputes and the contested decisions 5 The facts of the disputes, as set out in paragraphs 1 to 10 of the judgments under appeal, may be summarised as follows. 6 On 25 June and 1 October 2007, [OSCURATO:PERSONA] filed applications with [OSCURATO:PERSONA] for registration of the word mark ‘[OSCURATO:PERSONA]’ as a [OSCURATO:PERSONA] trade mark. 7 The first of those applications, which gave rise to the judgment in Case T‑448/11, concerned goods and services in Classes 9, 28 and 41 of the [OSCURATO:PERSONA] of 15 June 1957 concerning the [OSCURATO:PERSONA] of Goods and Services for the Purposes of the Registration of [OSCURATO:PERSONA], as revised and amended (‘the [OSCURATO:PERSONA]’), which corresponded, for each of those classes, to the following description: –        [OSCURATO:PERSONA] 9: ‘Slot machines, for use in combination with a screen, video tapes, CDs, CD Roms, DVDs and other disc-shaped sound and image carriers, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; photographic, cinematographic and optical apparatus and instruments, recording discs, data processing equipment and computers, computer hardware and software, compact discs, mouse-mats, mobile phone accessories, sunglasses’; –        [OSCURATO:PERSONA] 28: ‘Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees, electronic games’; –        [OSCURATO:PERSONA] 41: ‘Education; providing of training; entertainment; sporting and cultural activities, production of television and radio programmes and entertainment programmes, production of motion picture films, theatre production such as shows and theatrical performances, production of musicals, organization of music events/concerts, production of games, game services provided on-line (via internet)’. 8 The second of those applications, which gave rise to the judgment in Case T‑437/11, concerned goods in Classes 16, 21 and 24 of the [OSCURATO:PERSONA], which corresponded, for each of those classes, to the following description: –        [OSCURATO:PERSONA] 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter; book binding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks’; –        [OSCURATO:PERSONA] 21: ‘Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes, mugs, glasses’; –        [OSCURATO:PERSONA] 24: ‘Textiles and textile goods, not included in other classes; bed and table covers, towels, duvet covers’. 9 [OSCURATO:PERSONA] trade mark applications were published in [OSCURATO:PERSONA] 64/2007 of 26 November 2007 and No 8/2008 of 18 February 2008, respectively. 10 On 26 February 2008 and on 16 May 2008, respectively, [OSCURATO:SOCIETA] filed a notice of opposition under [OSCURATO:PERSONA] 42 of [OSCURATO:PERSONA] 40/94 against registration of the mark applied for in both cases, in relation to the goods and services referred to in paragraphs 7 and 8 above, respectively. 11 The two oppositions were based, inter alia, on the earlier [OSCURATO:PERSONA] word mark BALLON D’OR, filed on 24 December 2004 and registered on 7 November 2006 under No 4226148, covering goods and services in Classes 9, 14, 16, 18, 25, 28, 38 and 41 of the [OSCURATO:PERSONA] and corresponding, for each of those classes, to the following description: –        [OSCURATO:PERSONA] 9: ‘Scientific (other than for medical purposes), nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision) and life-saving apparatus and instruments; teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; CDs, magnetic and optical data carriers, recording discs; video cassettes, audio cassettes, radios, television apparatus, telephone apparatus, automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines; fire-extinguishing apparatus; data processing apparatus and equipment, computers, computer software (recorded), telecommunications apparatus and instruments, apparatus and instruments for the transmission and reception of images, sound and data, electronic organisers, divers’ masks, optical goods, spectacles, sunglasses’; –        [OSCURATO:PERSONA] 14: ‘Precious metals and their alloys other than for dental purposes; jewellery, precious stones; horological and chronometric instruments, watches, clocks, alarm clocks, chronometers, brooches (jewellery), sundials, medals, figurines (statuettes) of precious metal, cigar cases, cigarettes cases and cigarette lighters of precious metal, ashtrays of precious metal, cigarette cases of precious metal, key rings (trinkets or fobs)’; –        [OSCURATO:PERSONA] 16: ‘Paper and cardboard (unprocessed, semi-finished or for stationery); printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); wrapping paper; sacks, bags and sheets for packaging in paper or plastics; printers’ type; printing blocks, newspapers, books, magazines’; –        [OSCURATO:PERSONA] 18 — ‘Leather and imitations of leather, and goods made from these materials and not included in other classes; trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery’; –        [OSCURATO:PERSONA] 25: ‘Clothing (apparel), footwear (except orthopaedic footwear); headgear; motorists’ clothing; swimwear and bathing caps; bathrobes; berets; smocks; bodies; caps (headwear); boots; braces; underpants; caps; belts; shawls; dressing gowns; sweaters; hats; socks; booties; football boots; ski boots; sports shoes; shirts; under shirts; tights; wet suits for water skiing; suits; cyclists’ clothing; mufflers; esparto shoes or sandals; scarves; gabardines (clothing); waistcoats; gymnastics shoes; raincoats; slips; swaddling clothes; coats; trousers; slippers; overcoats; parkas; bathrobes; pullovers; pyjamas; dresses; dressing gowns; wooden shoes; aprons (clothing); uniforms; jackets; gymnastic clothing; clothing of leather and imitations of leather; visors (hatmaking)’; –        [OSCURATO:PERSONA] 28: ‘Games and playthings; gymnastic and sporting articles (other than clothing, footwear and mats); decorations for Christmas trees; hang gliders; bladders of balls for games; air pistols (toys); artificial fishing bait; percussion caps (toys); toys for pets; ring games; ornaments for Christmas trees (except illumination articles and confectionery); Christmas tree stands; Christmas trees of synthetic material; archery implements; bows for archery; novelties for parties, dances (party favours); swings; balls for games, play balloons; baseball gloves; swimming pools (play articles); stationary exercise bicycles; billiard balls, cues and tables; marbles for games; bob-sleighs; playing balls; boxing gloves; gut for rackets; fishing rods; golf balls; toy masks; kites; dolls’ rooms; rocking horses; targets; toy building structures; machines for physical exercises; cricket bags; golf clubs; golf bags, with or without wheels; hockey sticks; appliances for gymnastics; draughts (games); dice; discuses for sports; dominoes; chess sets; arms; fencing gloves and masks; climbers’ harnesses; exercisers (expanders); nets for sports; ski bindings; darts; foils for fencing; floats for fishing; indoor football tables; harpoon guns (sports articles); golf gloves; bar-bells; fish hooks; rattles; counters for games; automatic and electronic games, other than coin-operated and those adapted for use with television receivers only; mah-jong sets; puppets; scale-model vehicles; swim fins; teddy bears; paragliders; ice skates; roller-skates; fishing tackle; skateboards; sailboards; surf boards; dolls; protective paddings (part of sport suits); elbow, knee and shin guards (sports articles); ninepins; bats for games; skis; water skis; surf skis; parlour games; tables for table tennis; sledges; spinning tops (toys); sleighs (sports articles); spring boards (sporting articles); scooters (toys); toy vehicles; shuttlecocks; dolls’ clothes; game cards’; –        [OSCURATO:PERSONA] 38: ‘Telecommunications; transmission of images, sound and data by telephone, by computer terminals, a global communications network (the Internet) or local communications network (an intranet), satellite and electronic mail; processing, monitoring, broadcasting and reception of data, signals, images and information processed by computers or by telecommunications apparatus and instruments; transmission of information contained in databanks and image banks; dissemination of information by electronic means, news agencies; communications by fibre optic networks; radio, telephone or telegraph communications services; broadcasting of television programmes; radio broadcasting; television broadcasting, sending of telegrams; radio broadcasting; satellite transmission; data transmission; cable television broadcasting’; –        [OSCURATO:PERSONA] 41: ‘Education; providing of training; entertainment; sporting and cultural activities; timing of sports events, organisation of sports competitions and awarding of trophies, club services (entertainment), sports club services, radio and television entertainment, providing sports facilities, amusement parks, providing recreational facilities; publication of books, magazines and newspapers, production of radio and television programmes, rental of sports equipment (except vehicles); arranging and conducting of conferences, forums and colloquiums; gymnastic instruction, amusement parks, organisation of competitions (education or entertainment), production of shows, sports camp services, film production, rental of stadium facilities’. 12 The grounds relied on in support of the oppositions were those set out in [OSCURATO:PERSONA] 8(1)(b) and [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 40/94. 13 On 19 and 31 May 2010, the [OSCURATO:PERSONA] rejected both oppositions for the following reasons. It found that the goods and services covered by the signs at issue were partly identical and partly different. In its view, the signs were visually and phonetically different, and slightly similar conceptually for one section of the relevant public. Furthermore, the [OSCURATO:PERSONA] found that, as the signs were dissimilar overall, there was no likelihood of confusion between those signs for the purposes of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94. Lastly, as regards the ground relating to the reputation of the earlier mark, it found that, since the signs were dissimilar, [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 40/94 is not applicable. 14 On 15 and 27 July 2010, [OSCURATO:SOCIETA] filed a notice of appeal with [OSCURATO:PERSONA] in each case under Articles 57 to 62 of [OSCURATO:PERSONA] 40/94 (to which Articles 58 to 64 of [OSCURATO:PERSONA] 207/2009 correspond) against the decisions of the [OSCURATO:PERSONA]. 15 By the contested decisions, the [OSCURATO:PERSONA] of Appeal of [OSCURATO:PERSONA] upheld the appeals in part, that is to say, in respect of certain goods in [OSCURATO:PERSONA] 9 of the [OSCURATO:PERSONA] and the goods and services in Classes 16, 28 and 41 of that agreement, and in part dismissed them, that is to say, in respect of the ‘apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity’ in [OSCURATO:PERSONA] 9 of the [OSCURATO:PERSONA] and the goods in Classes 21 and 24 of that agreement. In particular, it found as follows: –        the relevant public is composed of both professionals and average consumers in the [OSCURATO:PERSONA], who are reasonably well-informed and reasonably observant and circumspect. For the purposes of the assessment of the likelihood of confusion, the public to be taken into consideration is the public with a lower level of attention: in the circumstances, the average [OSCURATO:PERSONA] consumer; –        with regard to the comparison of the goods and services, the [OSCURATO:PERSONA] of Appeal agreed with the assessment of the [OSCURATO:PERSONA], which was uncontested by the parties. Accordingly, the [OSCURATO:PERSONA] of Appeal considered the [OSCURATO:PERSONA] 9 goods covered by the mark applied for to be partly identical to, partly similar to and partly dissimilar to the [OSCURATO:PERSONA] 9 goods covered by the earlier mark. [OSCURATO:PERSONA] 16 and [OSCURATO:PERSONA] 28 goods covered by the mark applied for were identical to the [OSCURATO:PERSONA] 16 and [OSCURATO:PERSONA] 28 goods covered by the earlier mark, and the [OSCURATO:PERSONA] 21 and [OSCURATO:PERSONA] 24 goods were different from those covered by the earlier mark. [OSCURATO:PERSONA] 41 services covered by the mark applied for were identical or highly similar to the [OSCURATO:PERSONA] 41 services covered by the earlier mark; –        as regards the comparison of the signs at issue, the [OSCURATO:PERSONA] of Appeal considered them to be visually and phonetically different, agreeing on that point with the assessment of the [OSCURATO:PERSONA]. By contrast, contrary to the [OSCURATO:PERSONA], the [OSCURATO:PERSONA] of Appeal concluded that, conceptually, the signs were identical or, ‘at the least’, extremely similar; –        in the light of those elements, the [OSCURATO:PERSONA] of Appeal concluded that there was a likelihood of confusion or of association between the signs at issue in respect of the identical goods and services in Classes 9, 16, 28 and 41 of the [OSCURATO:PERSONA], and that there was no likelihood of confusion in respect of the various goods in Classes 9, 21 and 24 of that agreement; –        the [OSCURATO:PERSONA] of Appeal deemed it unnecessary to consider matters in the light of [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 40/94. The proceedings before the [OSCURATO:PERSONA] and the judgments under appeal 16 By two applications lodged at the Registry of the [OSCURATO:PERSONA] on 5 August 2011, [OSCURATO:PERSONA] brought two actions for annulment of the contested decisions to the extent that they upheld the appeals in respect of certain goods and services in Classes 9, 16, 28 and 41 of the [OSCURATO:PERSONA]. 17 [OSCURATO:SOCIETA] also submitted applications under [OSCURATO:PERSONA] 134(3) of the Rules of Procedure of the [OSCURATO:PERSONA], seeking annulment of the contested decisions to the extent that they dismiss its oppositions in respect of the ‘apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity’ in [OSCURATO:PERSONA] 9 of the [OSCURATO:PERSONA] and the goods covered by the mark applied for in Classes 21 and 24 of that agreement. 18 In support of its applications, framed in comparable terms, [OSCURATO:PERSONA] put forward a single plea in law, alleging infringement of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94. In support of its applications for annulment, [OSCURATO:SOCIETA] raised a single plea in law, alleging infringement of [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 40/94 and Articles 62(1) and 74(1) of that regulation (now Articles 64(1) and 76(1) of [OSCURATO:PERSONA] 207/2009). 19 By the judgments under appeal, the [OSCURATO:PERSONA] upheld the actions brought by [OSCURATO:PERSONA] and dismissed [OSCURATO:SOCIETA]’s claims. Consequently, it annulled point 1 of the operative part of both contested decisions. 20 As regards the assessment of the likelihood of confusion for the purposes of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94, the [OSCURATO:PERSONA] held first, in paragraph 27 of the judgments under appeal, that the [OSCURATO:PERSONA] of Appeal had been correct in finding that, in the circumstances, the relevant public was composed of average consumers in the [OSCURATO:PERSONA], reasonably well-informed and reasonably observant and circumspect. 21 Secondly, the [OSCURATO:PERSONA] upheld, in paragraph 31 of the judgments under appeal, the finding of the [OSCURATO:PERSONA] of Appeal concerning the comparison of the goods and services at issue, which, moreover, had not been contested by the parties. 22 Thirdly, in relation to the comparison of the signs at issue, the [OSCURATO:PERSONA] stated in paragraphs 37 and 40 of the judgment under appeal that the [OSCURATO:PERSONA] of Appeal was correct to find that those signs were visually and phonetically different. 23 As regards the [OSCURATO:PERSONA] of Appeal’s assessment that, conceptually, the signs at issue were identical or, at the least, extremely similar, the [OSCURATO:PERSONA] observed in paragraph 41 of the judgments under appeal that those signs call to mind, from an objective point of view and apart from some differences in the details, in principle the same semantic content or the same idea, namely, ‘a golden balloon or a golden ball or gold’. In paragraph 42 of those judgments, the [OSCURATO:PERSONA] added that, for the purposes of assessing the conceptual similarity for the relevant public — in particular, for the average anglophone and francophone public — due account had to be taken of the fact that the earlier mark is in the French language whereas the mark applied for is in English, and the signs at issue accordingly differ as regards the language enabling their respective conceptual content to be understood. 24 While admitting, in paragraph 43 of the judgments under appeal, that such a linguistic difference is not sufficient to exclude the existence of a conceptual similarity from the point of view of the relevant consumers, the [OSCURATO:PERSONA] found that, in so far as such a difference requires the consumer to make a translation, it is nevertheless capable — depending, inter alia, on the linguistic knowledge of the relevant public, the degree of relationship between the languages concerned and the actual words used by the signs at issue — of preventing the relevant public, at least to some degree, from making an immediate conceptual comparison. 25 In that respect, the [OSCURATO:PERSONA] stated in paragraph 44 of the judgments under appeal that it was not established that the meaning of the mark applied for, comprising the words ‘golden’ and ‘balls’, will immediately be understood by the relevant public, namely the general public in the [OSCURATO:PERSONA], in particular the francophone public, which understands the French expression ‘ballon d’or’ constituting the earlier mark. In paragraph 45 of those judgments, the [OSCURATO:PERSONA] specified that, even assuming that ‘the words “golden” and “ball” are part of basic English-language vocabulary and that they are, therefore, as such, understandable for the average consumer, including the average francophone consumer, that does not mean that that consumer, who will generally — as the parties agree — have a weak understanding of the English language, will understand those words in their specific combination “golden balls” immediately as an English translation of the French expression “ballon d’or”, which constitutes the earlier mark’. 26 In paragraphs 47 and 48 of the judgments under appeal, the [OSCURATO:PERSONA] pointed out differences between the signs at issue which militate against such an immediate conceptual comparison. It took the view that the fact that its use of the plural distinguishes the sign ‘[OSCURATO:PERSONA]’ from the earlier sign ‘BALLON D’OR’ would not go unnoticed by the relevant public, given that that is a fairly basic grammatical point which is also capable of being understood and perceived by the francophone public, especially as the plural of words is formed in the same way in English as in French. It also stated that the difference in the respective positions of the words ‘golden’ and ‘d’or’ — in the one case, at the beginning of the sign and, in the other, at the end — as well as the clear difference between the origins of the two words are differences likely to render the immediate discovery of the similar hidden meaning of the signs at issue more difficult, both for the francophone consumer and for the anglophone consumer with an average level of attention. 27 [OSCURATO:PERSONA] added, in paragraph 49 of the judgments under appeal, that, in any event, it appeared improbable that the result of such an analysis of the translation would spontaneously enter the head of the average consumer concerned, contemplating a simple purchase of everyday consumer goods. This led the [OSCURATO:PERSONA] to conclude in paragraph 50 of those judgments that the [OSCURATO:PERSONA] of Appeal was wrong to consider the signs at issue to be conceptually extremely similar or identical, since those signs have, at most, a weak — or even very weak — degree of conceptual similarity for the reasonably informed and observant relevant public, in particular the francophone public. 28 Fourthly, the [OSCURATO:PERSONA] pointed out in paragraph 58 of the judgments under appeal, in the context of the overall assessment of the likelihood of confusion, that, even though the goods at issue were identical, the very weak conceptual similarity of the signs at issue, for which an act of translation was a pre-requisite (‘prior translation’), was not enough to offset their visual and phonetic dissimilarities. Furthermore, in paragraph 59 of those judgments, the [OSCURATO:PERSONA] stated that the highly distinctive character of the mark BALLON D’OR had not been established as regards the goods concerned and that — even if that mark enjoys a highly distinctive character and account is taken of the fact that the goods and services in question are identical or similar — the very weak conceptual similarity, which depended on ‘prior translation’, could not, in the circumstances of the case, be sufficient in itself to create a likelihood of confusion on the part of the target public. Consequently, in paragraph 60 of the judgments under appeal, the [OSCURATO:PERSONA] concluded that the [OSCURATO:PERSONA] of Appeal was wrong to find that there was a likelihood of confusion on the part of the relevant public in respect of the identical or similar goods and services covered by the signs at issue, given that the fact that the signs at issue are in different languages creates a manifest distinction between them so that the average consumer will not immediately associate them without undertaking an intellectual process of translation. 29 As regards the question whether the [OSCURATO:PERSONA] of Appeal had failed to comply with an essential procedural requirement by not examining the ground of opposition relating to breach of [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 40/94, the [OSCURATO:PERSONA] found in paragraph 68 of the judgments under appeal that the [OSCURATO:PERSONA] of Appeal had considered it unnecessary to examine that ground, notwithstanding the fact that the subject-matter of the dispute also covered various goods that fell outside the purview of the [OSCURATO:PERSONA] of Appeal’s assessment of the likelihood of confusion. In paragraphs 72 to 75 of those judgments, the [OSCURATO:PERSONA] concluded, having regard to its assessments concerning the comparison of the signs at issue for the purposes of applying [OSCURATO:PERSONA] 8(1)(b) of that regulation, that those signs lacked the requisite similarity for the purposes of applying [OSCURATO:PERSONA] 8(5) of that regulation and that, therefore, the opposition had in any event to be rejected in its entirety. Consequently, the [OSCURATO:PERSONA] held that the plea raised by [OSCURATO:SOCIETA] had to be rejected as being of no effect. Forms of order sought and procedure before the [OSCURATO:PERSONA] 30 By its appeals, [OSCURATO:SOCIETA] claims that the [OSCURATO:PERSONA] of Justice should set aside the judgments under appeal, refer the cases back to the [OSCURATO:PERSONA] for a decision on the actions brought under [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 40/94, and reserve the costs. 31 [OSCURATO:PERSONA] claims that the [OSCURATO:PERSONA] should uphold the appeals and order [OSCURATO:PERSONA] to pay the costs incurred by [OSCURATO:PERSONA]. 32 [OSCURATO:PERSONA] contends that the [OSCURATO:PERSONA] should dismiss the appeals and order [OSCURATO:PERSONA] — or, alternatively, [OSCURATO:SOCIETA], or, in the further alternative, [OSCURATO:PERSONA] and [OSCURATO:SOCIETA], jointly and severally — to pay the costs incurred by [OSCURATO:PERSONA]. 33 By order of the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] of 10 December 2013, [OSCURATO:PERSONA] C‑581/13 P and C‑582/13 P were joined for the purposes of the written and oral procedure and the judgment. The appeals 34 [OSCURATO:SOCIETA] relies, in essence, on three grounds of appeal: (i) distortion of the facts in the assessment of the abilities of the relevant public; (ii) infringement of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94 (this ground of appeal is divided into two parts in Case C‑582/13 P and into three parts in Case C‑581/13 P); and (iii) infringement of [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 40/94. [OSCURATO:PERSONA] ground of appeal: distortion of the facts Arguments of the parties 35 By its first ground of appeal, [OSCURATO:SOCIETA] claims that the [OSCURATO:PERSONA] distorted the facts in concluding, in paragraph 45 of the judgments under appeal, that ‘the parties agree[d]’ that the average consumer, including the average francophone consumer, generally has a weak understanding of the English language. 36 [OSCURATO:PERSONA] contends that no such distortion is evident from the documents in the file and that the [OSCURATO:PERSONA] conclusion concerning the level of competence of the French general public in that language is based on well-known facts. 37 [OSCURATO:PERSONA] maintains that [OSCURATO:SOCIETA] acknowledged, at least implicitly in its oral submissions, that the relevant public has a weak understanding of the English language and contends that the [OSCURATO:PERSONA] could, in any event, arrive at its conclusion regardless of the opinions of the parties. Findings of the [OSCURATO:PERSONA] 38 As regards the distortion of the facts alleged by [OSCURATO:SOCIETA], it should be borne in mind that, under [OSCURATO:PERSONA] 256(1) TFEU and the first paragraph of [OSCURATO:PERSONA] 58 of the Statute of the [OSCURATO:PERSONA] of Justice of the [OSCURATO:PERSONA], an appeal is to be limited to points of law. [OSCURATO:PERSONA] has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts or evidence are distorted, constitute points of law open, as such, to review by the [OSCURATO:PERSONA] of Justice on appeal (see, inter alia, the judgments in DKV v [OSCURATO:PERSONA] , C‑104/00 P, EU:C:2002:506, paragraph 22, and Storck v [OSCURATO:PERSONA] , C‑25/05 P, EU:C:2006:422, paragraph 40). 39 It should also be recalled that such distortion must be obvious from the documents before the [OSCURATO:PERSONA], without there being any need to carry out a new assessment of the facts and the evidence (see, inter alia, the judgments in [OSCURATO:PERSONA] v [OSCURATO:PERSONA] , C‑16/06 P, EU:C:2008:739, paragraph 69, and [OSCURATO:PERSONA] v [OSCURATO:PERSONA] (Proprietary) and [OSCURATO:PERSONA] , C‑398/07 P, EU:C:2009:288, paragraph 41). 40 In the present case, it is sufficient to note that it is not obvious from the documents before the [OSCURATO:PERSONA] of Justice that, by the assertion made in paragraph 45 of the judgments under appeal and disputed by [OSCURATO:SOCIETA], the [OSCURATO:PERSONA] distorted that company’s position concerning the average francophone consumer’s level of knowledge of the English language. 41 The present ground of appeal must therefore be rejected. Second ground of appeal: infringement of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94 42 The second ground of appeal is divided into several parts. By the first part, Inter-Presse submits that the [OSCURATO:PERSONA] made an incorrect assessment of the relevant public, in that it only took into account part of that public. The second part of this ground of appeal concerns the error of law allegedly made by the [OSCURATO:PERSONA] in its assessment of ‘conceptual similarity’. By the third part of this ground of appeal, which is raised only in Case C‑581/13 P, [OSCURATO:SOCIETA] submits that, in its assessment of the likelihood of confusion, the [OSCURATO:PERSONA] omitted to take into account the high distinctiveness of the earlier mark in relation to the services concerned in that case. [OSCURATO:PERSONA] part of the second ground of appeal: incorrect assessment of the relevant public –       Arguments of the parties 43 [OSCURATO:SOCIETA] submits that the relevant public is the general public in the [OSCURATO:PERSONA] with a sufficient understanding of both French and English and that the [OSCURATO:PERSONA] — when comparing the signs at issue conceptually — effectively reduced the relevant public to the average francophone consumer. As a result, the [OSCURATO:PERSONA] incorrectly assessed the degree of conceptual similarity between the signs at issue. 44 [OSCURATO:PERSONA] agrees with [OSCURATO:SOCIETA]’s argument regarding the incorrect assessment of the relevant public, to the extent that it is directed at the failure to take into account part of the relevant public when comparing the signs at issue. In that regard, [OSCURATO:PERSONA] points out that the [OSCURATO:PERSONA] did not state the reasons for which the anglophone public cannot immediately link the signs on account of their meaning. [OSCURATO:PERSONA] argues that that failure to state reasons did not only constitute a breach of an essential procedural requirement, but also led to the infringement of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94 to the extent that no consideration was given to the way in which the signs were perceived by part of the relevant public. 45 [OSCURATO:PERSONA] contends that the [OSCURATO:PERSONA] always considered the public at large but, for the sake of argument, it considered a sub-set of the general public — average francophone consumers — which ‘represented the most favourable scenario for [OSCURATO:SOCIETA]’s case’. [OSCURATO:PERSONA] adds that there was no evidence before the [OSCURATO:PERSONA] that any other sub-set of the general public would be better placed than the francophone part of that public, for the purposes of the conceptual understanding of the two signs. –       Findings of the [OSCURATO:PERSONA] 46 It should be observed that the arguments put forward by [OSCURATO:SOCIETA] and [OSCURATO:PERSONA] in support of the first part of the second ground of appeal are based on a manifest misreading of the judgments under appeal. 47 It does not emerge from those judgments that a part of the relevant public was ignored by the [OSCURATO:PERSONA] when assessing the conceptual similarity of the marks at issue. Contrary to the assertions made by [OSCURATO:SOCIETA] and [OSCURATO:PERSONA], the [OSCURATO:PERSONA] conclusions regarding the degree of similarity between the signs at issue are based on its consideration of all the relevant public, including the anglophone public. 48 In that regard, it should be borne in mind that, under [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94, where the earlier mark relied on in support of opposition proceedings is a [OSCURATO:PERSONA] trade mark, the trade mark in respect of which registration is sought is not to be registered if, because it is identical or similar to that earlier trade mark and the goods or services covered by those marks are identical or similar, there is a likelihood of confusion on the part of the public in the [OSCURATO:PERSONA] (see to that effect, inter alia, the judgment in Armacell v [OSCURATO:PERSONA] , C‑514/06 P, EU:C:2008:511, paragraph 55). 49 In the present cases, in order to assess whether there could be such a likelihood of confusion, the [OSCURATO:PERSONA] first step was to make the finding, in paragraph 27 of the judgments under appeal, that ‘the relevant public was composed of average consumers in the [OSCURATO:PERSONA], reasonably well informed and reasonably observant and circumspect’. 50 Subsequently, for the purposes of assessing conceptual similarity, the [OSCURATO:PERSONA] relied in paragraph 42 of those judgments on the point of view of that general public, ‘in particular the average anglophone and francophone public’. 51 Lastly, after pointing out in paragraph 43 of the judgments under appeal that a linguistic difference between the signs is capable of preventing the relevant public, at least to some degree, from drawing an immediate conceptual comparison between the signs, the [OSCURATO:PERSONA] held in paragraphs 47 and 48 of those judgments — without confining its findings to one single part of the relevant public — that, because of the differences between the signs at issue, such a comparison would not readily be made. Specifically, in paragraph 48 of those judgments, the [OSCURATO:PERSONA] stated that some of those differences between the signs at issue ‘are capable of impeding the immediate discovery of the similar hidden meaning of the signs at issue, both for the francophone and anglophone consumer with an average level of attention’. 52 Accordingly, it must be held that, contrary to the assertions made by [OSCURATO:SOCIETA] and [OSCURATO:PERSONA], the [OSCURATO:PERSONA] did not reduce the relevant public to the average francophone consumer. Their arguments in that respect must therefore be rejected as manifestly unfounded. 53 As regards the failure to state reasons alleged by [OSCURATO:PERSONA] in respect of the [OSCURATO:PERSONA] finding concerning the perception of the relevant public — other than the francophone public — of the two signs at issue, it should be borne in mind that, according to the settled case-law of the [OSCURATO:PERSONA], the duty incumbent upon the [OSCURATO:PERSONA] under [OSCURATO:PERSONA] 36 and the first paragraph of [OSCURATO:PERSONA] 53 of the Statute of the [OSCURATO:PERSONA] of Justice to state reasons for its judgments does not require the [OSCURATO:PERSONA] to provide an account that follows exhaustively and one by one all the arguments articulated by the parties to the case. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the grounds on which the [OSCURATO:PERSONA] has based its findings and provides the [OSCURATO:PERSONA] of Justice with sufficient material for it to exercise its appellate jurisdiction (see, inter alia, the judgment in Isdin v [OSCURATO:PERSONA] and Bial-Portela , C‑597/12 P, EU:C:2013:672, paragraph 21). 54 In the present cases, it is apparent from paragraphs 47 and 48 of the judgments under appeal, inter alia, that the [OSCURATO:PERSONA] analysed the signs at issue and justified its assessment of their conceptual differences, such as might be perceived by the relevant public as a whole. It must therefore be concluded that the [OSCURATO:PERSONA] did not fail in its duty to state reasons. 55 In the light of all the foregoing considerations, the first part of the second plea must be rejected as manifestly unfounded. Second part of the second ground of appeal: incorrect assessment of the conceptual similarity –       Arguments of the parties 56 [OSCURATO:SOCIETA] submits that, in paragraph 60 of the judgments under appeal, the [OSCURATO:PERSONA] erred in law in its assessment of the conceptual similarity of the signs at issue. According to [OSCURATO:SOCIETA], the [OSCURATO:PERSONA] was incorrect to add a condition, in order for those signs to be recognised as similar, relating to an intellectual process involving the translation of those signs by the relevant public. [OSCURATO:SOCIETA] argues that the relevant public is capable of identifying the meaning of the words ‘golden balls’ and ‘ballon d’or’ and of forming the view that, conceptually, the signs are identical or highly similar. According to [OSCURATO:SOCIETA], application of the criterion of an ‘intellectual process of translation’ or ‘prior translation’ is artificial for the purposes of assessing the conceptual similarity of the signs at issue. 57 [OSCURATO:SOCIETA] adds that, when word marks are composed of basic words in various languages understood by the public, which is the case here, there is no ‘intellectual process of translation’; nor does the consumer engage in ‘prior translation’ or ‘begin by translating’. According to [OSCURATO:SOCIETA], the meaning of those words would be immediately understood by the relevant public, whatever its mother tongue. 58 [OSCURATO:PERSONA] submits that the [OSCURATO:PERSONA] did not predicate the conceptual similarity of the signs at issue on the existence of an intellectual process, undertaken by the relevant public, consisting in the translation of those signs. 59 [OSCURATO:PERSONA], [OSCURATO:PERSONA] shares [OSCURATO:SOCIETA]’s view that the intellectual process of translation is not a relevant criterion for the purposes of assessing whether the signs at issue are conceptually similar. According to [OSCURATO:PERSONA], that criterion is relevant only in the context of the overall assessment of the likelihood of confusion. The degree of conceptual similarity between such signs does not depend on the more or less immediate connection made by the public between the meanings of those signs, but only on their closeness in terms of the idea that they each evoke. 60 [OSCURATO:PERSONA] contends that the cognitive process of translation is an aspect of the conceptual comparison that comes into play when the words for which registration as marks is sought are not in the same language. [OSCURATO:PERSONA] also argues that, by the second part of the second ground of appeal, [OSCURATO:SOCIETA] is attempting to portray an assessment of fact as a principle of law. –       Findings of the [OSCURATO:PERSONA] 61 As regards the argument put forward by [OSCURATO:SOCIETA] and [OSCURATO:PERSONA] concerning the significance placed on prior translation, for the purposes of assessing the conceptual similarity of the word marks at issue, which are in different languages, it should be noted that by ‘conceptual similarity’, those parties mean the manner in which the relevant public understands the signs at issue. [OSCURATO:SOCIETA] and [OSCURATO:PERSONA] are thus attempting to have the [OSCURATO:PERSONA] re-examine the appraisal of the facts made by the [OSCURATO:PERSONA] in paragraphs 42 to 50 of the judgments under appeal, to the effect that: (i) the signs at issue differ as regards the language enabling their respective conceptual content to be understood and (ii) that linguistic difference is capable of preventing the relevant public, at least to some degree, from making an immediate conceptual comparison. 62 [OSCURATO:PERSONA] has held that findings relating to the characteristics of the relevant public and to its degree of attention, perception or attitude represent appraisals of fact (see, inter alia, the order in Shah v Three-N-[OSCURATO:PERSONA] , C‑14/12 P, EU:C:2013:349, paragraph 28 and the case-law cited) and that the same is true as regards the relevant public’s understanding of the meanings of different languages (see the order in adp Gauselmann v [OSCURATO:PERSONA] , C‑532/10 P, EU:C:2011:433, paragraph 51). 63 Accordingly, as such an assessment is not open to review by the [OSCURATO:PERSONA] of Justice on appeal, the argument of [OSCURATO:SOCIETA] and [OSCURATO:PERSONA] in that regard must be rejected as manifestly inadmissible, as must, in consequence, the second part of the second plea. Third part of the second ground of appeal: incorrect assessment of the distinctiveness of the earlier mark 64 [OSCURATO:SOCIETA] submits that the [OSCURATO:PERSONA] failed, in the judgment in Case T‑448/11, to take into consideration, for the purposes of assessing the likelihood of confusion between the marks at issue, the distinctiveness of the earlier mark BALLON D’OR in relation to the services in [OSCURATO:PERSONA] 41 of the [OSCURATO:PERSONA] and, in particular, in relation to ‘a sports competition’. 65 In that regard, it should be pointed out that [OSCURATO:SOCIETA]’s argument is based on a manifestly incorrect reading of the judgment in Case T‑448/11. 66 While it is true that, in paragraph 59 of the judgment in Case T‑448/11, the [OSCURATO:PERSONA] did not specifically hold that the mark BALLON D’OR was devoid of distinctive character as regards the services at issue, it nevertheless clearly stated in that paragraph that, in the circumstances, such distinctive character would not, in any event, affect the overall assessment of the likelihood of confusion on the part of the target public. It follows that, contrary to the assertions made by [OSCURATO:SOCIETA], the [OSCURATO:PERSONA] considered the possible impact of the distinctive character of the mark BALLON D’OR on the likelihood of confusion, as regards the services at issue. 67 It is apparent from all the above considerations that none of the three parts of the second plea can be upheld. Consequently, that plea must be rejected as in part unfounded and in part manifestly inadmissible. Third ground of appeal: infringement of [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 40/94 68 By its third ground of appeal, which is divided into two parts, [OSCURATO:SOCIETA] submits that the [OSCURATO:PERSONA] infringed [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 40/94. [OSCURATO:PERSONA], according to [OSCURATO:SOCIETA], the [OSCURATO:PERSONA] wrongly inferred from the lack of similarity between the signs at issue for the purposes of [OSCURATO:PERSONA] 8(1)(b) that there was a lack of similarity for the purposes of [OSCURATO:PERSONA] 8(5). Secondly, according to [OSCURATO:SOCIETA], the [OSCURATO:PERSONA] should also have evaluated the application of [OSCURATO:PERSONA] 8(5) in respect of the similar or identical goods in relation to which it had held that there was no likelihood of confusion. 69 It is appropriate first of all to examine the first part of that ground of appeal. Arguments of the parties 70 [OSCURATO:SOCIETA] submits, in essence, that the [OSCURATO:PERSONA] did not correctly assess the conditions for the application of [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 40/94. It wrongly omitted to assess the effect of the repute of the earlier mark, despite the supposedly low degree of similarity between the signs at issue, on the link that the relevant public could make between those signs. According to [OSCURATO:SOCIETA], it is only where there is no similarity between the earlier mark and the mark for which registration is sought that such an examination is unnecessary. 71 [OSCURATO:PERSONA] submits that the [OSCURATO:PERSONA] also infringed [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 40/94, but only as a result of the error in law made in the conceptual and overall comparison of the signs at issue. Findings of the [OSCURATO:PERSONA] 72 [OSCURATO:PERSONA] has consistently held that the degree of similarity required under [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94, on the one hand, and [OSCURATO:PERSONA] 8(5) of that regulation, on the other, is different. Whereas the implementation of the protection provided for under [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94 is conditional upon a finding of a degree of similarity between the marks at issue so that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by [OSCURATO:PERSONA] 8(5) of that regulation. Accordingly, the types of injury referred to in [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 40/94 may be the consequence of a lesser degree of similarity between the earlier and the later marks, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (see judgment in Ferrero v OHMI , C‑552/09 P, EU:C:2011:177, paragraph 53 and the case-law cited). 73 According to the same case-law, [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 40/94, like [OSCURATO:PERSONA] 8(1)(b), is manifestly inapplicable where the [OSCURATO:PERSONA] rules out any similarity between the marks at issue. It is only if there is some similarity, even faint, between the marks at issue that the [OSCURATO:PERSONA] must carry out an overall assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks by the relevant public ( Ferrero v [OSCURATO:PERSONA] , EU:C:2011:177, paragraph 66). 74 In the present cases, the [OSCURATO:PERSONA] found in paragraph 72 of the judgments under appeal that, ‘having regard to the assessments made in paragraphs 41 to 51 [of those judgments]’, the signs at issue lacked the requisite similarity for the purposes of applying [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 40/94. 75 However, although the [OSCURATO:PERSONA] found in paragraphs 41 to 51 of the judgments under appeal that those signs were not at all visually or phonetically similar, it also found that there was a low degree of conceptual similarity between them. Thus, the [OSCURATO:PERSONA] did not, in those judgments, rule out all possibility that the marks at issue were similar. 76 Consequently, in accordance with the case-law cited in paragraph 73 above, the [OSCURATO:PERSONA] was wrong to rule out the application of [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 40/94 without first undertaking an overall assessment of the marks at issue in order to ascertain whether that low degree of similarity was nevertheless sufficient, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, for the relevant public to make a link between those marks. 77 In those circumstances, it must be held that the [OSCURATO:PERSONA] erred in law in concluding in paragraph 72 of the judgments under appeal that the [OSCURATO:PERSONA] of Appeal had been under a duty — even if it had examined the plea raised by [OSCURATO:SOCIETA] alleging infringement of [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 40/94 — to reject the opposition concerning the ‘apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity’ in [OSCURATO:PERSONA] 9 of the [OSCURATO:PERSONA] and the goods in Classes 21 and 24 of that agreement. 78 Accordingly, without it being necessary to examine the other arguments put forward by [OSCURATO:SOCIETA], the first part of the third ground of appeal must be upheld and the judgments under appeal set aside to the extent that they dismissed the two applications for annulment submitted by [OSCURATO:SOCIETA]. The action at first instance 79 [OSCURATO:PERSONA] the first paragraph of [OSCURATO:PERSONA] 61 of the Statute of the [OSCURATO:PERSONA] of Justice, if the [OSCURATO:PERSONA] quashes decisions of the [OSCURATO:PERSONA], it may itself give final judgment in those matters, where the state of the proceedings so permits. That is the position in the present cases. 80 In support of its applications, under [OSCURATO:PERSONA] 134(3) of the Rules of Procedure of the [OSCURATO:PERSONA], for annulment of the contested decisions to the extent that they reject its oppositions against registration of the sign ‘[OSCURATO:PERSONA]’ as a mark concerning ‘apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity’ in [OSCURATO:PERSONA] 9 of the [OSCURATO:PERSONA] and the goods in Classes 21 and 24 of that agreement, [OSCURATO:SOCIETA] raises a single plea in law, alleging infringement of Articles 8(5), 62(1) and 74(1) of [OSCURATO:PERSONA] 40/94. According to [OSCURATO:SOCIETA], the [OSCURATO:PERSONA] of Appeal should have ruled on the plea alleging infringement of [OSCURATO:PERSONA] 8(5) of that regulation, in relation to the goods referred to above. 81 At the hearing before the [OSCURATO:PERSONA], [OSCURATO:PERSONA] essentially admitted that the fact that the [OSCURATO:PERSONA] of Appeal did not rule on the plea alleging infringement of [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 40/94 constituted an infringement of an essential procedural requirement. 82 In the present cases, the [OSCURATO:PERSONA] of Appeal — unlike the [OSCURATO:PERSONA] — found that the signs at issue were similar overall. Accordingly, it concluded that there was a likelihood of confusion in relation to the identical or similar goods and services at issue, pursuant to [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94. It therefore took the view that it was unnecessary to examine the pleas raised by [OSCURATO:SOCIETA] on the basis of [OSCURATO:PERSONA] 8(5) of that regulation, despite the fact that the dispute also concerned different goods, not covered by the [OSCURATO:PERSONA] of Appeal’s assessment relating to the likelihood of confusion. 83 In that respect, it should be noted that, under [OSCURATO:PERSONA] 62(1) of [OSCURATO:PERSONA] 40/94, by virtue of the appeal brought before it, the [OSCURATO:PERSONA] of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms both of law and of fact ( [OSCURATO:PERSONA] v Kaul , C‑29/05 P, EU:C:2007:162, paragraph 57). 84 In the present cases, that obligation to examine the merits of the appeal must be understood as meaning that the [OSCURATO:PERSONA] of Appeal was obliged to decide on each of the heads of claim submitted for its consideration in order to give a decision on the oppositions by either rejecting them or declaring them to be founded, thereby either upholding or reversing the decisions of the [OSCURATO:PERSONA] contested before it (see, to that effect, [OSCURATO:PERSONA] v Kaul , EU:C:2007:162, paragraph 56). 85 In the light of the considerations set out in paragraphs 72 to 77 above, it should be noted that, in so far as it did not give a decision on [OSCURATO:SOCIETA]’s plea alleging infringement of [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 40/94 in relation to the goods referred to in paragraph 80 above, the [OSCURATO:PERSONA] of Appeal failed to fulfil its obligation to carry out a new, full examination of the merits of the oppositions filed by that company. 86 It follows that the contested decisions must also be annulled to the extent that they dismissed the appeals against the rejections of the opposition to the registration of the mark [OSCURATO:PERSONA] in relation to the ‘apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity’ in [OSCURATO:PERSONA] 9 of the [OSCURATO:PERSONA] and the goods in Classes 21 and 24 of that agreement. Costs 87 [OSCURATO:PERSONA] 184(2) of the Rules of Procedure of the [OSCURATO:PERSONA] of Justice, where the appeal is well founded and the [OSCURATO:PERSONA] itself gives final judgment in the case, the [OSCURATO:PERSONA] is to make a decision as to costs. 88 [OSCURATO:PERSONA] 138(3) of the Rules of Procedure, applicable to appeal proceedings by virtue of [OSCURATO:PERSONA] 184(1) of those rules, where each party succeeds on some heads and fails on others, the parties are to bear their own costs. 89 In the present cases, it must first be observed that, although one of the grounds of appeal put forward by [OSCURATO:SOCIETA] was upheld and the judgments under appeal have been aside on that ground, that is not the position as regards the other grounds of appeal, which were each in turn rejected by the [OSCURATO:PERSONA]. 90 Secondly, with regard to the action at first instance, it should be noted that, by annulling the contested decisions in part, the [OSCURATO:PERSONA] has also upheld the plea in law raised by [OSCURATO:SOCIETA]. On the other hand, it is apparent from the judgments under appeal, which have not been overturned by the [OSCURATO:PERSONA] on these points, that [OSCURATO:SOCIETA] and [OSCURATO:PERSONA] did not succeed in relation to the pleas in law raised by [OSCURATO:PERSONA] at first instance. 91 In those circumstances, and since each of the parties has been unsuccessful in part, both at first instance and on appeal, they must be ordered to bear their own costs. On those grounds, the [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) hereby: 1. Sets aside the judgments of the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] in [OSCURATO:PERSONA] v [OSCURATO:PERSONA] — [OSCURATO:SOCIETA] ([OSCURATO:PERSONA]) (T‑448/11, EU:T:2013:456) and in [OSCURATO:PERSONA] v [OSCURATO:PERSONA] — [OSCURATO:SOCIETA] ([OSCURATO:PERSONA]) (T‑437/11, EU:T:2013:441) to the extent that they dismissed the two applications for annulment submitted by [OSCURATO:SOCIETA]; 2. Dismisses the appeals as to the remainder; 3. Annuls point 2 of the operative part of the decision of the [OSCURATO:PERSONA] of Appeal of the Office for Harmonisation in the [OSCURATO:PERSONA] ([OSCURATO:PERSONA] and Designs) ([OSCURATO:PERSONA]) of 22 June 2011 (Case R 1432/2010-1) and point 2 of the operative part of the decision of the [OSCURATO:PERSONA] of Appeal of the Office for Harmonisation in the [OSCURATO:PERSONA] ([OSCURATO:PERSONA] and Designs) ([OSCURATO:PERSONA]) of 26 May 2011 (Case R 1310/2010-1); 4. [OSCURATO:SOCIETA], the Office for Harmonisation in the [OSCURATO:PERSONA] ([OSCURATO:PERSONA] and Designs) ([OSCURATO:PERSONA]) and [OSCURATO:PERSONA] to bear their own costs at first instance and on appeal. [Signatures] * Language of the case: English.