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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> MIP Metro Group Intellectual Property GmbH & Co. KG v OHIM (trade mark ) [2008] EUECJ T-290/07 (10 December 2008) URL: http://www.bailii.org/eu/cases/EUECJ/2008/T29007.html Cite as: [2009] ETMR 51, [2008] EUECJ T-290/07, [2008] EUECJ T-290/7

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(Community trade mark Opposition proceedings Application for Community figurative trade mark METRONIA Earlier national figurative trade mark METRO Relative ground for refusal Likelihood of confusion Article 8(1)(b) of Regulation (EC) No 40/94)

In Case T-290/07,

MIP Metro Group Intellectual Property GmbH & Co. KG, established in Düsseldorf (Germany), represented by J.-C. Plate, lawyer,

applicant,

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

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being

Metronia, SA, established in Madrid (Spain), represented by J. Riera Blanco, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 29 May 2007 (Case R 1315/2006-2), relating to opposition proceedings between MIP Metro Group Intellectual Property GmbH & Co. KG and Metronia, SA,

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

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 31 July 2007,

having regard to the response of OHIM lodged at the Registry of the Court of First Instance on 16 October 2007,

having regard to the response of the intervener lodged at the Registry of the Court of First Instance on 4 February 2008,

further to the hearing on 3 July 2008,

gives the following

Background to the dispute

1. On 9 October 2003, the intervener, Metronia, SA, submitted an application for a Community trade mark to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2. The mark for which registration was sought was the figurative sign METRONIA, shown below:



3. The goods and services in respect of which registration was sought fall within Classes 9, 20, 28 and 41 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, after restriction, to the following description:

Class 9: 'Computer applications and identification systems for general use or which can be used directly or indirectly in any kind of game, whether for simple entertainment, betting or gaming, sound and video apparatus, computer programs, scientific apparatus and instruments, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, data processing equipment and computers';

Class 20: 'Amusement arcade furniture';

Class 28: 'Games, automatic and coin-operated games machines, automatic games not coin-operated and other than those adapted for use with television receivers only, electronic games other than those adapted for use with television receivers only, counters for games';

Class 41: 'Providing amusement arcade facilities, games provided on-line (from a computer network), gaming'.

4. The application was published in Community Trade Marks Bulletin No 31/2004, of 2 August 2004.
5. On 1 November 2004, the applicant, MIP Metro Group Intellectual Property GmbH & Co. KG, filed a notice of opposition against the mark applied for, claiming that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94. The opposition was based on the existence of the figurative trade mark METRO, reproduced below:



6. That mark was filed in Germany on 15 April 1995 and registered on 17 November 1995 under No 39516389, inter alia for the following goods in Classes 9, 20, 28 and 41 of the Nice classification which correspond, for each of those classes, to the following description:

Class 9: 'Data processing apparatus and computers, machine'readable data carriers with programs recorded thereon, data processing programs';

Class 20: 'Furniture';

Class 28: 'Games, in particular electrical and electronic games';

Class 41: 'Public entertainment'.

7. By decision of 10 August 2006, the Opposition Division upheld the opposition in its entirety on the ground that there was a likelihood of confusion in Germany. The Opposition Division considered that the goods in Classes 9, 20 and 28 covered by the Community mark applied for and the earlier national trade mark were identical and that the services in Class 41 were similar. In its view the signs at issue were similar because the earlier trade mark was distinctive per se and the trade mark applied for reproduced the applicant's mark. The Opposition Division found that there was a likelihood of confusion, since the public concerned could take the trade mark applied for to be a modification of the earlier mark based on the same distinctive element 'metro'.
8. On 9 October 2006, the intervener appealed against the decision of the Opposition Division.
9. By decision of 29 May 2007 ('the contested decision'), the Second Board of Appeal allowed the appeal and annulled the decision of the Opposition Division. The Board of Appeal observed, in essence, that the goods and services covered by the conflicting trade marks were identical and that the signs were visually, phonetically and conceptually dissimilar. Accordingly, notwithstanding the identity of the goods and services, the Board of Appeal found that an essential condition for applying Article 8(1)(b) of Regulation No 40/94, namely the identity or similarity of the signs, was lacking; therefore, there could not be any likelihood of confusion.

Forms of order sought by the parties

10. The applicant claims that the Court should:

annul the contested decision;

order OHIM to pay the costs, including those of the opposition and appeal proceedings before the Board of Appeal.

11. OHIM contends that the Court should:

dismiss the application;

order the applicant to pay the costs.

12. The intervener contends that the Court should uphold the contested decision.

Admissibility of the documents produced for the first time before the Court of First Instance

13. OHIM submits that Annexes A8 and A9 to the application were not submitted at an earlier stage of the administrative proceedings before OHIM, and should therefore be declared inadmissible.
14. It should be noted that the purpose of an action before the Court of First Instance is to review the legality of decisions of the Boards of Appeal of OHIM within the meaning of Article 63 of Regulation No 40/94. It is thus not the Court's function to re-evaluate the factual circumstances in the light of evidence adduced for the first time before it (Case T-10/03 Koubi v OHIM Flabesa(CONFORFLEX) [2004] ECR II-719, paragraph 52, and Case T-336/03 Éditions Albert René v OHIM Orange (MOBILIX) [2005] ECR II-4667, paragraphs 15 and 16).
15. It follows that Annexes A8 and A9 to the application, which were never submitted during the administrative procedure before OHIM, must be declared inadmissible.

The application for annulment of the contested decision

Arguments of the parties

16. The applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 40/94.
17. First, as regards the comparison of the goods and services in question, the applicant states that it agrees on that point with the contested decision that they are identical. However, the applicant points out that the Board of Appeal did not adhere to the case-law of the Court of Justice according to which likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the relevant goods and services. According to the applicant, having regard to that principle and in view of the identity of the goods and services, the mark 'METRONIA' had to differ widely from the earlier mark 'METRO'.
18. Second, as regards the similarity of the signs at issue, the applicant points out that the marks have to be compared taking into account their distinctive and dominant components. Phonetically, the mark 'METRONIA' is clearly dominated by the word element 'metronia' owing to the use of capital letters and the size of the word element. The depiction of a globe shows little originality since it clearly represents the letter 'O'. The two conflicting marks are depicted in the same way in yellow capital letters, so that, visually also, the same elements are dominant. The applicant refers to an extract from the homepage of Metro Cash & Carry GmbH, one of the applicant's subsidiaries which uses the trade mark METRO with its consent, from which it is apparent that that subsidiary uses the earlier mark in yellow on a blue background. The applicant also refers to another German registration of its trade mark, namely registration No 30348717, showing the trade mark METRO with the same colours and graphical design as the mark applied for. Visually, the two marks are almost identical. Moreover, phonetically, the identity of the first part of the words underlines the likelihood of confusion since the consumer attaches most importance to the beginning of words. The element 'metro' is pronounced clearly, whereas the element 'nia' can easily be swallowed during conversations between consumers, especially over the telephone.
19. Even if 'metro' was not considered the dominant element of the mark applied for, there is still a likelihood of confusion, since the consumer perceives a mark as a whole and it is quite possible that, in a particular case, an earlier mark used by a third party in a composite sign including the name of the company of the third party still has an independent distinctive role in the composite sign, without necessarily constituting the dominant element, and that the relevant public may be led to believe that the goods or services at issue derive from the same company or from companies which are linked. In the present case, the sign METRONIA gives the impression that a relationship of a commercial, organisational or licensing nature exists between that mark and the mark METRO. The applicant points out that it is the largest trade enterprise in Germany and the third largest in the world, so the public may believe that 'metro' and 'metronia' are linked. Therefore, there is a likelihood of confusion or association.
20. According to OHIM, the likelihood of confusion must be assessed, as is apparent from paragraph 20 of the contested decision, taking into account the average German consumer. With regard to the comparison of the goods and services, OHIM points out that it is not disputed that the goods and services at issue are identical to the extent that the list of goods and services of the earlier trade mark encompasses that of the goods and services of the mark applied for.
21. As regards the comparison of the signs, OHIM points out that a complex mark cannot be regarded as similar to another trade mark which is identical or similar to one of the components of the complex mark, unless that component forms the dominant element within the overall impression created by the complex mark, and that that is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it. Although the dominant element in the earlier mark is the word element 'metro' it is debatable whether the dominant element in the mark applied for is the word 'metronia', owing to the presence of the figurative element of that sign representing a globe, which is eye-catching or, as the Board of Appeal puts it, 'prominent'. The globe device cannot be considered to be a negligible component. OHIM refers, however, to a less strict approach taken by the Court of First Instance in a case in which it held that composite signs may be similar if their differentiating elements are perceived as 'equal or inferior' to the common element without the differentiating elements being necessarily negligible. OHIM contends, nevertheless, that, even if the word element METRONIA were considered to be the dominant element of the trade mark applied for, that dominant element cannot be arbitrarily abbreviated to the word 'metro'.
22. Visually, the signs display striking dissimilarities due to the difference in length of the word elements (eight letters against five) and, above all, to the graphic disparities, including the figurative element representing a globe and the colours used for the letters of the word elements. Phonetically, even though two syllables are the same, the last syllable 'nia' in the mark applied for is clearly audible. Conceptually, the earlier sign may be perceived as referring to the underground rail system, which the applicant does not dispute, although the first impression conveyed by the mark applied for is that it is a neologism.
23. In that regard, OHIM points out that although the Court of First Instance originally considered that the conceptual similarity between signs had to be assessed on the basis of the evocative force that could be recognised in each of them taken as a whole, its view has evolved in that it has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, he breaks it down into word elements which, for him, suggest a concrete meaning or which resemble words known to him. OHIM submits that, if that guidance is followed, the signs are in any case dissimilar on a conceptual level, because the word 'metro', when used alone, evokes an underground railway system, whereas, if the prefix 'metro' in 'metronia' could be linked to a concept, that concept would either be that of a measure indicator, 'Metronom' ('metronome') or, more probably, that of an urban environment, as in the German word 'Metropole' (metropolis). The two concepts at issue are therefore very dissimilar.
24. The fact that the sign applied for includes the word element of the earlier sign does not lead to the conclusion that the signs are similar, since the sign METRONIA is not perceived, either visually or aurally, as the word 'metro' with the component 'nia' tagged onto the end. The applicant's argument that the word element 'metro' retains an independent distinctive role in the mark applied for within the meaning of the judgment in Case C-120/04 Medion [2005] ECR I-8551, paragraphs 34 to 36, cannot succeed. First, the factual circumstances are different because there is no widely-known trade mark or commercial name adjoined to the common element 'metro', and the applicant never claimed or proved that the sign 'METRO' was a well-known trade mark or commercial name in the sector of the goods and services concerned. Second, it is apparent from the case-law that signs are considered dissimilar overall where the mark applied for forms a 'logical and conceptual unit of its own' with the result that the common element does not hold an 'independent distinctive position'. This is the case because, as the Board of Appeal said, consumers will see the mark METRONIA as an indivisible, euphonic whole.
25. As regards the likelihood of confusion, OHIM contends that, even if the Court of First Instance found the signs to present a degree of aural similarity, this would not affect the outcome of the dispute for two reasons. First, a degree of aural similarity does not necessarily lead to the conclusion that the signs are similar if, as in this case, visual and conceptual differences prevail. Second, in the global assessment of the likelihood of confusion, the respective weight to be given to the visual, phonetic or conceptual aspects of the opposing signs may vary according to the objective circumstances in which the marks may be present on the market. In the present case, the goods and services at issue are not, under normal circumstances, sold in response to an oral order. Consequently, the clear visual differences outweigh the minor aural similarities, if any.
26. The applicant's argument that it holds rights conferred by the trade mark METRO written in a similar font and in association with the colour blue, as in the mark applied for, first, must fail, because the applicant never invoked German trade mark registration No 30348717 and the document containing that registration is inadmissible; second, this document must also fail to the extent that it is based on the conditions of use of the earlier mark. The applicant's argument that use of the mark applied for would cause an indirect likelihood of confusion or a likelihood of association likewise cannot succeed because, if an association could lead to the likelihood of confusion, confusion would be caused in specific circumstances which are not present in this case, namely, the existence of a family of marks, which the applicant has not claimed to be the case. OHIM submits that, in any event, the applicant never claimed or proved that the earlier mark was a well-known trade mark or commercial name for the goods and services at issue. Furthermore, Annex A9 is inadmissible.
27. Finally, as regards the decisions of the German patents office and the German courts rejecting applications for the registration of trade marks containing the word element 'metro', OHIM contends that no decision was submitted to it in the course of the administrative proceedings and that, in any event, it is settled case-law that national decisions are not binding upon OHIM.
28. The intervener considers that there are clear differences between the signs at issue and there is therefore no likelihood of confusion or association on the part of the relevant public.
29. The intervener argues that trade marks must be compared on an overall basis, without segregating the word and figurative elements of the signs in question, since such an operation distorts the distinctive impression which the sign will produce. The intervener does not dispute that the root 'metro' appears in both signs but points out that they comprise different words and graphics and, in any case, a decisive role is played by the graphical form of the letter 'O' of METRONIA, in imitation of a bingo ball pot. These differences make it possible to distinguish between the signs at issue. The intervener considers that the consumer views a sign as a whole and does not analyse specific elements, and that the trade mark applied for is longer than the earlier mark. The intervener bases its argument on established case-law.
30. The intervener points out all the differences between the signs at issue (colours, layout) and maintains that the fact that the earlier mark is also habitually used on a navy blue background is irrelevant, since the dispute concerns the coexistence of the conflicting signs, as registered, within the marketplace. The visual and phonetic differences are striking in the present case: the signs at issue appear and sound completely different, with the result that, in accordance with established case-law, there is no possibility of confusion among the potential users of the conflicting trade marks.

Findings of the Court

31. According to Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if 'because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark'. Moreover, according to Article 8(2)(a)(i) and (ii) of Regulation No 40/94, 'earlier trade marks' cover Community trade marks as well as trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
32. According to consistent case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (Case T-186/02 BMI Bertollo v OHIM Diesel(DIESELIT) [2004] ECR II-1887, paragraph 34, and Case T-483/04 Armour Pharmaceutical v OHIM Teva Pharmaceutical Industries(GALZIN) [2006] ECR II-4109, paragraph 63; see also, by analogy, Case C-39/97 Canon [1998] ECR I-5507, paragraph 29, and Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 17).
33. In addition, the likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (Case T-104/01 Oberhauser v OHIM Petit Liberto (Fifties) [2002] ECR II-4359, paragraph 26, and GALZIN, paragraph 32 above, paragraph 63; see also, by analogy, Case C-251/95 SABEL [1997] ECR I-6191, paragraph 22, and Case C-425/98 Marca Mode [2000] ECR I-4861, paragraph 40).
34. That global assessment implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods and services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (Case T-6/01 Matratzen Concord v OHIM Hukla Germany(MATRATZEN) [2002] ECR II-4335, paragraph 25, upheld on appeal by order in Case C-3/03 P Matratzen Concord v OHIM [2004] ECR I-3657, and GALZIN, paragraph 32 above, paragraph 64; see also, by analogy, Canon, paragraph 32 above, paragraph 17; Lloyd Schuhfabrik Meyer, paragraph 32 above, paragraph 19, and Marca Mode, paragraph 33 above, paragraph 40). The interdependence of these factors is expressly referred to in the seventh recital in the preamble to Regulation No 40/94, according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion, the assessment of which depends on a variety of factors which include recognition of the trade mark on the market, the association which may be made of it with the sign as used or registered and, the degree of similarity between the mark and the sign and between the goods or services covered (see DIESELIT, paragraph 32 above, paragraph 36, and the case-law cited).
35. Moreover, the global assessment must, as regards the visual, aural or conceptual similarity of the conflicting signs, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 8(1)(b) of Regulation No 40/94 'there exists a likelihood of confusion on the part of the public' shows that the perception of the marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see, to that effect, order in Matratzen Concord v OHIM, paragraph 34 above, paragraph 29; DIESELIT, paragraph 32 above, paragraph 38; also see, to that effect and by analogy, SABEL, paragraph 33 above, paragraph 23, and Lloyd Schuhfabrik Meyer, paragraph 32 above, paragraph 25).
36. For the purposes of the global assessment of the likelihood of confusion, the average consumer of the goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. In addition, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but has to place his trust in the imperfect image of them that he has retained in his mind. It should also be remembered that the average consumer's level of attention is likely to vary according to the category of goods or services in question (Fifties, paragraph 33 above, paragraph 28, and DIESELIT, paragraph 32 above, paragraph 38; see also, by analogy, Lloyd Schuhfabrik Meyer, paragraph 32 above, paragraph 26).
37. As regards, first, the definition of the relevant public, it should be noted that, as the Board of Appeal stated (paragraph 20 of the contested decision), the goods and services covered by the application for a Community trade mark and those of the earlier mark are intended for all consumers, so that the relevant public is the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect.
38. As regards, secondly, the territory concerned, it is clear that, since the earlier mark is registered in Germany, the territory in respect of which the likelihood of confusion must be assessed is the territory of that Member State.
39. It is in the light of the foregoing considerations that the assessment by the Board of Appeal of the likelihood of confusion between the conflicting signs must be examined.

Similarity of the goods and services

40. As the Board of Appeal found in paragraph 21 of the contested decision, without being challenged by the applicant, the category of 'data processing apparatus' covered by the applicant's mark is broad enough to encompass the 'computer applications and identification systems' in Class 9 of the intervener's trade mark application. Moreover, as regards Class 20, 'furniture' covered by the earlier mark encompasses 'amusement arcade furniture' covered by the mark applied for and, as regards Class 28, 'games' covered by the earlier mark encompass the various 'games' of the mark applied for. Finally, the same marks also cover entertainment services in Class 41. Consequently, the goods and services covered by the earlier mark are identical to those covered by the mark applied for.

The similarity of the signs

41. In general terms, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, aural and conceptual aspects (MATRATZEN, paragraph 34 above, paragraph 30; Case T-97/05 Rossi v OHIM Marcorossi(MARCOROSSI), not published in the ECR, paragraph 39, and Case T-34/04 Plus v OHIM Bälz and Hiller (Turkish Power) [2005] ECR II-2401, paragraph 43, upheld on appeal by order of 1 June 2006 in Case C-324/05 P Plus Warenhandelsgesellschaft v OHIM, not published in the ECR).
42. In the present case, it must be noted that the word element 'metro' is common to both conflicting signs. In that respect, the fact that one of the components of a complex trade mark is identical to another trade mark does not mean that those two marks are similar unless that component forms the dominant element within the overall impression created by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (MATRATZEN, paragraph 34 above, paragraph 33; judgment of 22 March 2007 in Case T-322/05 Brinkmann v OHIM Terra Networks(Terranus), not published in the ECR, paragraph 35, upheld on appeal by order in Case C-243/07 P Brinkmann v OHIM [2008] ECR I-0000).
43. In particular, on the one hand, the Court of Justice has held in this regard 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 complex 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. On the other hand, 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 judgment of 20 September 2007 in Case C-193/06 P Nestlé v OHIM, not published in the ECR, paragraphs 35 and 43, and the case-law cited).
44. In the first place, as regards the visual comparison of the signs in question, it must be pointed out that the 'metro' element is the dominant component of the earlier mark, in so far as the figurative element is very simple and only uses the colour yellow, and the printed characters of the mark are not in any way original. As regards the mark applied for, although the first four letters are identical, the figurative element, a stylized figure of a globe which is intended, when the sign is read, to replace the letter 'O', immediately attracts attention. That impression is reinforced, on the one hand, by the size of the globe, which is larger than the other letters and, as the Board of Appeal rightly noted in paragraph 23 of the contested decision, 'prominent' and, second, by the fact that the yellow-orange line surrounding that globe is much thicker than the line surrounding the other characters of the mark applied for. Lastly, the dark blue letters of the mark applied for are different from the bright yellow letters of the earlier mark.
45. It follows from the foregoing that the figurative elements of the mark applied for are not negligible and that the word element 'metronia' is not the dominant component of that mark.
46. Therefore, notwithstanding the fact that the first four letters of the mark applied for are identical to those of the earlier mark and that, generally, the consumer's attention is drawn to the beginning of a word (see, to that effect, Terranus, paragraph 42 above, paragraph 37 and the case'law cited), it must be pointed out that, because of the presence of the figurative element of the globe that is intended to represent the letter 'O', the colour scheme and the additional suffix 'nia', the two signs are visually dissimilar.
47. It follows that the Board of Appeal did not commit an error when it found, in paragraph 24 of the contested decision, that the marks were visually dissimilar.
48. In the second place, as regards the aural similarity of the signs, it must be recalled that, in the strict sense, the aural reproduction of a complex sign corresponds to that of all its verbal elements, regardless of their specific graphic features, which on the whole fall within the scope of the analysis of the sign on a visual level (Case T-352/02 Creative Technology v OHIM Vila Ortiz(PC WORKS) [2005] ECR II-1745, paragraph 42).
49. In paragraph 24 of the contested decision, the Board of Appeal indicated that the signs were dissimilar.
50. In this respect, it must be recalled that the consumer normally attaches more importance to the first part of words (see, to that effect, Joined Cases T-183/02 and T-184/02 El Corte Inglés v OHIM González Cabelloand Iberia Líneas Aéreas de España(MUNDICOR) [2004] ECR II-965, paragraph 81, and judgment of 8 February 2007 in Case T-88/05 Quelle v OHIM Nars Cosmetics (NARS), not published in the ECR, paragraph 63) and that, in the present case, the two signs share the initial five letters (namely the METRO sign in its entirety), since the earlier mark is entirely reproduced in the mark applied for (see, to that effect, judgment of 27 September 2007 in Case T-418/03 La Mer Technology v OHIM Laboratoires Goà«mar(LA MER), not published in the ECR, paragraph 123).
51. The difference brought about by the additional component 'nia' is not sufficient to offset the identical nature of the first two syllables (see, to that effect, Case T-256/04 Mundipharma v OHIM Altana Pharma (RESPICUR) [2007] ECR II-449, paragraph 56). The pronunciation of the mark applied for is not changed significantly, despite the additional component 'nia', as the Opposition Division moreover stated. Even though, according to German rules of pronunciation, the emphasis in the earlier mark is on the first consonant and, in the mark applied for, on the second consonant, it has not been shown that that difference leads to changes in the pronunciation or a perceptible lengthening of the letter 'O' (see, to that effect, Terranus, paragraph 42 above, paragraph 38; see, also, Case C-108/07 P Ferrero Deutschland v OHIM and Cornu [2008] ECR I-0000, paragraph 47, and DIESELIT, paragraph 32 above, paragraph 50).
52. Therefore, it must be stated that, contrary to what the Board of Appeal found, there is a certain aural similarity between the signs.
53. In the third place, as regards the conceptual comparison of the signs, it is common ground that there is a conceptual difference between them, since, unlike the earlier mark, the mark applied for might call to mind a fictitious place, such as 'Metropolis', or be regarded as a neologism. By contrast, it cannot be asserted that, when it sees the word 'metro', the German public would think of an underground railway system, unless the word was used to refer to a foreign railway system.
54. It follows that there is no conceptual similarity between the signs at issue.
55. It follows from all of the foregoing that, contrary to the Board of Appeal's findings, there is a certain aural similarity between the conflicting marks, so that the Board of Appeal was wrong to find that there was a complete lack of similarity between the signs at issue and not to analyse the likelihood of confusion between the signs.
56. For the purpose of the global assessment of the likelihood of confusion, the overall impression created by the two signs at issue must be considered (Case C-206/04 P Mülhens v OHIM [2006] ECR I-2717, paragraph 23, and Case C-234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I-7333, paragraph 37) and the signs' aural, visual and conceptual similarities must be weighed up, taking into account factors such as, in particular, the nature of the goods or services, the way they are marketed and the public's level of attention. In that regard, it should be pointed out that, although there will not necessarily always be a likelihood of confusion where two signs are found to be only aurally similar, it is nevertheless conceivable that the marks' aural similarity alone could create a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94. However, the existence of such a likelihood must be established as part of a global assessment as regards the conceptual, visual and aural similarities between the signs at issue and the assessment of any aural similarity is only one of the relevant factors for the purpose of that global assessment (Mülhens v OHIM, paragraphs 21 and 23; see also, to that effect, Il Ponte Finanziaria v OHIM, paragraphs 35 and 37; and Joined Cases T-117/03 to T-119/03 and T-171/03 New Look v OHIM Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II-3471, paragraph 49).
57. Under those circumstances, the single plea must be upheld and, consequently, the contested decision annulled.

Costs

58. The applicant has asked the Court of First Instance to order OHIM to bear the costs, including the costs of the opposition proceedings.
59. OHIM submits that that request is inadmissible in so far as, according to Article 136(2) of the Rules of Procedure of the Court of First Instance, those costs are not recoverable.
60. In this respect, pursuant to Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that is not the case as regards the costs incurred for the purposes of proceedings before the Opposition Division. Consequently, the applicant's request that OHIM be ordered to pay the costs of the administrative proceedings before the Opposition Division must be declared inadmissible (see, to that effect, Case T-3/04 Simonds Farsons Cisk v OHIM Spa Monopole(KINJI by SPA) [2005] ECR II-4837, paragraphs 77 and 78, and Case T-147/03 Devinlec v OHIM TIME ART(QUANTUM) [2006] ECR II-11, paragraph 115).
61. Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party's pleadings. Since OHIM has been unsuccessful, it must be ordered to pay the costs incurred by the applicant, as applied for by it. Since the intervener has been unsuccessful, it must bear its own costs.

On those grounds,

THE COURT OF FIRST INSTANCE (Eighth Chamber)

hereby:

1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 29 May 2007 (Case R 1315/2006-2);

2. Orders OHIM to bear its own costs and to pay the costs incurred by MIP Metro Group Intellectual Property GmbH & Co. KG;

3. Orders Metronia SA to bear its own costs.

Martins Ribeiro

Papasavvas

Dittrich

Delivered in open court in Luxembourg on 10 December 2008.

[Signatures]

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* Language of the case: English.