CURIA - Documents

Home > Search form > List of results > Documents

Start printing

Language of document : ECLI:EU:T:2014:158

JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

27 March 2014 (*)

(Community trade mark – Opposition proceedings – Application for the Community word mark AAVA MOBILE – Earlier Community word mark JAVA – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 – No likelihood of association – Link between the signs – Reputation – No similarity of the signs – Article 8(5) of Regulation No 207/2009)

In Case T‑554/12,

Oracle America, Inc., established in Wilmington, Delaware (United States), represented by M. Graf and T. Heydn, lawyers,

applicant,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by F. Mattina, and subsequently by P. Bullock, acting as Agent,

defendant,

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

Aava Mobile Oy, established in Oulu (Finland),

ACTION brought against the decision of the Second Board of Appeal of OHIM (Case R 1205/2011-2) of 9 October 2012, concerning opposition proceedings between Oracle Amercia, Inc. and Aava Mobile Oy,

THE GENERAL COURT (Fifth Chamber),

composed of A. Dittrich, President, J. Schwarcz and V. Tomljenović (Rapporteur), Judges,

Registrar: S. Spyropoulos, Administrator,

having regard to the application lodged at the Court Registry on 21 December 2012,

having regard to the response lodged at the Court Registry on 8 April 2013,

further to the hearing on 5 December 2013,

gives the following

Judgment

Background to the dispute

1 On 26 November 2009, Aava Mobile Oy filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2 The trade mark applied for is the word sign AAVA MOBILE.

3 The goods and services in respect of which the protection of that mark is claimed in the Community are in Classes 9, 38 and 42 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 38: ‘Telecommunications’;

– Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; in particular design and development of mobile devices, computer software to be used in mobile devices and mobile device product platforms’.

4 The application for a Community trade mark was published in Community Trade Marks Bulletin No 034/2010 of 22 February 2010.

5 On 25 May 2010, the applicant, Oracle America, Inc., filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above, pursuant to Article 41 of Regulation No 207/2009.

6 The opposition was based on the Community word mark JAVA, registered on 20 May 2009, under No 6551626, for goods and services in Classes 9, 35, 37, 38 and 42 of the Nice Agreement and which correspond, for each of those classes, to the following description:

– Class 9: ‘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; fire-extinguishing apparatus; computer hardware; computer peripherals; computer software; computer operating systems; hand-held computers; mainframe-class computers; computer workstations; video displays; keyboards; monitors; servers; disc drives; computer storage devices; integrated circuits; interface boards; modems; mouse pointing devices; mouse pads; peripherals; printers and printer peripherals; printed circuit boards containing electrical components and sockets; processors and memories; blank magnetic data carriers; audio cassette recorders; audio cassette players; compact disc players; compact disc recorders; semi-conductor elements; silicon slices; electronic notice boards; blank computer recording discs; calculators; computer chips; computer disk drives; computer discs; data processors; digital cameras; digital video recorders; electronic encryption units; facsimile machines; global positioning system transmitters and receivers; internet television hardware; microprocessors; microcomputers; minicomputers; motion picture cameras; optical scanners; oscilloscopes; pedometers; photocopying machines; personal digital assistants; photographic cameras; photographic projectors; slide projectors; radio pagers; radios; scanners; smart cards; smart card readers; telephones; telephone answering machines; television sets; television set top boxes; thermostats; video cameras; video cassette recorders; video monitors; video tape recorders; voice messaging systems; voting machines; web telephones; wireless data communications hardware; computer programs for testing compatibility of computer programs; computer programs for use in computer networking; computer programs for use in computer emulation; computer programs for use in electronic mail; computer programs for creating graphical interfaces; computer programs for use in database management; computer programs for document processing; computer programs for word processing; computer programs for preparing spreadsheets; computer programs for use in computer security; computer programs for use in the development of computer programs, programming languages, tool kits and compilers; computer programs for use in developing, compiling and executing other computer programs on computers, computer networks, and global communications networks; computer programs for use in navigating, browsing, transferring information, and distributing and viewing other computer programs on computers, computer networks and global communications networks; computer programs for recording, processing, receiving, reproducing, transmitting, modifying, compressing, decompressing, broadcasting, merging, and/or enhancing sound, video, images, graphics, and/or data; computer operating system programs; computer utility programs; computer programs for use with computer servers; computer programs for use in telephones; computer programs used in accessing databases; computer game programs; computer programs downloadable from global computer networks; and instructional manuals in electronic format sold therewith; downloadable electronic publications’;

– Class 35: ‘Arranging and conducting trade shows; arranging and conducting trade shows in the fields of computer and information technology; advertising; business management; business administration; office functions’;

– Class 37: ‘Repair; installation services; computer hardware services, namely installation, maintenance and repair of computer hardware, computer systems and computer networks’;

– Class 38: ‘Leasing of access time to computer networks and computer databases’;

– Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer services, namely, providing consultation services and advice in the fields of computers, computer hardware, computer software, computer peripherals, computer systems, computer networks, computer-related equipment, computer security, information technology, electronic commerce technology and global computer network technology; leasing services (long-time rental) in the fields of computers, computer hardware, computer software, computer peripherals, computer systems, computer networks, and computer-related equipment; design for others in the fields of computers, computer hardware, computer software, computer peripherals, computer systems, computer networks, computer-related equipment, computer security, information technology, electronic commerce technology and global computer network technology; installation, maintenance, and repair of computer software; data processing services; website design; website hosting; computer programming; providing online information and news in the field of computers, computer hardware, computer software, and technology; application service provider, namely, providing, hosting, managing, developing, and maintaining applications, software, websites, and databases in the fields of computers, computer hardware, computer software, computer peripherals, computer systems, computer networks, computer-related equipment, computer security, information technology, electronic commerce technology and global computer network technology, wireless communication, mobile information access, and remote data management’.

7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) of Regulation No 207/2009 and Article 8(5) of that regulation.

8 On 15 April 2011, the Opposition Division rejected the opposition, ruling, in essence, first, that there was no likelihood of confusion between the signs in question, within the meaning of Article 8(1)(b) of Regulation No 207/2009 and, second, that the earlier mark had no reputation, within the meaning of Article 8(5) of that regulation.

9 On 7 June 2011, the applicant filed a notice of appeal at OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

10 By decision of 9 October 2012 (‘the contested decision’), the Second Board of Appeal dismissed the appeal brought by the applicant. First, in so far as the opposition was based on Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal held that, given the lack of similarity between the signs at issue, there was no likelihood of confusion between the marks in question, even though the goods and services covered by those marks were identical and the earlier mark had a massive reputation (see paragraphs 18 and 37 of the contested decision). Second, in so far as the opposition was filed on the basis of Article 8(5) of that regulation, the Board of Appeal held, contrary to the Opposition Division’s conclusion, that the requirement that the earlier mark should have a reputation in order for such an opposition to be upheld was satisfied in the present case. However, it considered that the requirement that there should be some degree of similarity between the signs in question was not satisfied (see paragraph 41 of the contested decision).

Forms of order sought

11 The applicant claims that the Court should:

– annul the contested decision;

– order OHIM to pay the costs.

12 OHIM contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

Law

Admissibility of the applicant’s reference to the written pleadings and annexes thereto lodged before OHIM

13 OHIM puts forward a plea of inadmissibility claiming that, in paragraph 73 of the application, the applicant stated that it had ‘incorporate[d]’ the written pleadings and annexes thereto submitted in the course of the proceedings before OHIM into the file before the Court. In that context, OHIM recalls, in particular, the case-law according to which, in essence, it is not for the Court to find, in the file relating to the proceedings before OHIM, the arguments put forward by the applicant in an action brought before it.

14 In that regard, it must be observed that, in response to the Court’s questions at the hearing, the applicant stated, in essence, that its reference to the written pleadings and annexes thereto lodged before OHIM – in relation to which OHIM puts forward a plea of inadmissibility – was intended only to inform the Court that it was providing it with the evidence which it had submitted before OHIM establishing the reputation of the earlier mark.

15 Having regard to that clarification added by the applicant, it must be found that the applicant is not asking the Court to examine arguments put forward elsewhere than in the application. In those circumstances, OHIM’s plea of inadmissibility must be rejected as unfounded.

Substance

16 In support of its action, the applicant raises two pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation No 207/2009 and, second, infringement of Article 8(5) of that regulation.

The first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

17 The applicant claims, in essence, that the Board of Appeal was wrong in finding that there was no likelihood of confusion between the signs at issue.

18 OHIM contests the applicant’s arguments.

19 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot 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.

20 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically‑linked undertakings constitutes a likelihood of confusion. According to that same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).

21 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).

22 Furthermore, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services concerned, who is reasonably well-informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).

23 It the present case, it must be observed at the outset that the applicant does not dispute the Board of Appeal’s assessment, in paragraph 25 of the contested decision, that the goods and services covered by the signs in question are identical. That assessment must be confirmed.

24 In the light of the foregoing, it is necessary to consider whether, as the applicant claims, the Board of Appeal was wrong in finding that there was no likelihood of confusion between the signs in question.

– The relevant public

25 So far as concerns the relevant consumer, it should be borne in mind that, as the Board of Appeal rightly found in paragraph 24 of the contested decision, the likelihood of confusion between the signs in question must be assessed by having regard to the consumers in the territory of European Union Member States, as the earlier mark is a Community mark and, in view of the nature of the goods and services covered by the signs at issue, the relevant public is made up of the general public and professionals in the fields of science, information technology and telecommunications.

26 As regards the level of attention of the relevant public, it is clear from the case‑law that, where it is made up of consumers who are part of the general public and professionals, the group with the lowest level of attention must be taken into account (see the judgment of 15 July 2011 in Case T‑221/09 Ergo Versicherungsgruppe v OHIM – Société de développement et de recherche industrielle (ERGO Group), not published in the ECR, paragraph 21 and the case‑law cited; see also, to that effect, the judgment in 15 February 2011 in Case T‑213/09 Yorma’s v OHIM – Norma Lebensmittelfilialbetrieb (YORMA’S), not published in the ECR, paragraph 25). It follows that, in the present case, for those goods and services which address both the general public and professionals, account must be taken of the level of attention of the consumer who is part of the general public.

27 Moreover, contrary to what the applicant submitted at the hearing, it must be held, as OHIM rightly claimed, that the relevant consumer who is part of the general public will decide to purchase certain goods and services covered by the marks in question – in particular those which are expensive or aim to meet a particular technological need such as the design and development of computer hardware and software – on the basis of previously gathered information. In those circumstances, the level of attention of the relevant consumer will be higher than average for those goods and services. On the other hand, such a level of attention may decrease in respect of other goods and services covered by those marks, such as apparatus for recording, transmission or reproduction of sound or images, which constitute goods of mass consumption and which do not necessarily require particular technical knowledge and may be of relatively little monetary value. In those circumstances, the relevant public will thus have an average level of attention.

28 In the light of the considerations set out in paragraphs 25 to 27 above, in defining the relevant public, account must be taken of the average consumer in the European Union with either an average or above average level of attention, depending on the goods and services in question.

– Comparison of the signs in question

29 The applicant disputes the Board of Appeal’s analysis according to which the signs in question are not similar. According to the applicant, there are significant similarities between the signs.

30 In the first place, as regards the existence of a possible dominant element in the signs at issue, the applicant claims that the word ‘aava’ in the mark applied for is dominant and only that word should be taken into consideration when comparing the signs in question.

31 According to the case-law, the assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 41 and the case-law cited). 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 (OHIM v Shaker, paragraph 42, and the judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public keep in their minds, so that all the other components are negligible in the overall impression created by that mark (Nestlé v OHIM, paragraph 43).

32 In the present case, it must first be observed that, as is apparent from the Board of Appeal’s analysis in paragraphs 29 and 30 of the contested decision, neither ‘aava’ nor ‘mobile’ is capable on its own of dominating the image of the mark applied for which members of the relevant public will keep in their minds, or of being entirely disregarded in the overall impression produced by that mark.

33 On the one hand, it is not disputed that the word ‘aava’, which means ‘open’, ‘expansive’ or ‘wide’ in Finnish, has no meaning for the majority of members of the relevant public, which does not speak that language. That word will therefore be perceived by the majority of the relevant public as being invented and, therefore, distinctive. On the other, the Board of Appeal rightly considered, in paragraphs 29 and 30 of the contested decision, that the word ‘mobile’ is not distinctive in respect of some of the goods and services covered by the mark applied for. Contrary to what the applicant claimed at the hearing, that word is descriptive of some of the goods and services covered by the mark applied for, but not all of them, such as cash registers in Class 9 or industrial analysis and research services in Class 42.

34 In that context, it must be stated that, contrary to what the applicant submits, the fact that one of the two words which make up a word mark is descriptive is not on its own sufficient to conclude that that word is negligible in the overall impression produced by that mark (Case T‑194/09 Lan Airlines v OHIM – Air Nostrum (LINEAS AEREAS DEL MEDITERRANEO LAM) [2011] ECR II‑163, paragraph 30; see also, to that effect, the judgment of 13 December 2011 in Case T‑61/09 Meica v OHIM – Bösinger Fleischwaren (Schinken King), not published in the ECR, paragraph 47).

35 In the mark applied for, the word ‘mobile’ is not insignificant, in so far as it consists – visually – of two letters and – phonetically in many languages of the Union – of one syllable more than the word ‘aava’. Having regard to its visual significance in the mark applied for and the fact that it will be pronounced by the relevant consumer, the word ‘mobile’, even though it is merely in second position in that mark after the word element ‘aava’, cannot, as the Board of Appeal rightly considered in paragraphs 29 and 30 of the contested decision, be entirely disregarded by the relevant public.

36 The applicant’s other arguments put forward in that regard do not invalidate the finding made in paragraph 35 above.

37 First of all, the applicant relies on the case-law according to which, in essence, a descriptive element forming part of a composite mark cannot be considered to be the distinctive and dominant element of the overall impression produced by that mark. Clearly, such an argument cannot be upheld in the present case. Even if the view were to be taken that the word ‘mobile’, which is descriptive of some goods and services covered by the mark applied for, cannot, in accordance with that case-law, be considered to be the dominant element of the sign, that by no means implies that it must therefore be considered to be negligible.

38 Next, in so far as the applicant claimed at the hearing, in particular in answer to the questions put by the Court, that, in the telecommunications sector, the word ‘mobile’ should be disregarded because it would be perceived as an indication that the goods covered by that mark has been adapted so as to be used on a mobile device, such an argument is unfounded. Clearly, even if the word ‘mobile’ were descriptive of most of the goods and services covered by the mark applied for, that would have no bearing on the finding, in paragraph 35 above, that that word cannot, however, be considered to be negligible having regard to its significance in that sign and in view of the fact that it will be pronounced by the relevant consumer.

39 Contrary to what the applicant claims, the Board of Appeal was not therefore wrong in taking into consideration the overall impression created by the mark applied for rather than only the word ‘aava’ when comparing the signs at issue.

40 Second, it must be noted that, within the overall impression created by the mark applied for, the relevant public will pay more attention to the word ‘aava’ than the word ‘mobile’, as the Board of Appeal rightly stated in paragraphs 29 and 30 of the contested decision.

41 Apart from the fact that, as stated in paragraph 33 above, the majority of members of the relevant public will consider the word ‘aava’ in the mark applied for to be an invented word, that word is placed at the beginning of the sign. On the other hand, the word ‘mobile’ – which is placed at the end of the sign and which, as OHIM observes, refers, for some members of the relevant public, to things that can be moved or relocated – will be perceived as evoking some of the goods and services relating to telecommunications or mobile device hardware covered by the mark applied for.

42 In those circumstances, contrary to what the applicant claims, the Board of Appeal rightly assessed the mark applied for as a whole, while attaching greater importance to the word ‘aava’ than the word ‘mobile’, which cannot be disregarded.

43 In the second place, with regard to the visual comparison of the signs in question, the Board of Appeal found, in paragraph 34 of the contested decision, that those signs were not similar, a finding which is disputed by the applicant. According to the applicant, there is a high degree of visual similarity between those signs.

44 It must be noted in that regard that, as the applicant rightly observes, only the letter ‘j’ in the earlier mark JAVA distinguishes that mark from the first word element in the mark AAVA, which includes an additional letter ‘a’. The combination of letters ‘ava’ is common to both of the signs at issue.

45 However, it must be found that the resemblances which result from the presence of the common letters ‘ava’ are completely offset by the significant differences between those signs.

46 First of all, as the Board of Appeal rightly found in paragraph 29 of the contested decision, the relevant public will note the difference between the first letter of those signs, that is to say the letter ‘a’ in respect of the mark applied for and the letter ‘j’ in respect of the earlier mark. That difference is intensified, as OHIM rightly observes, by the unusual repetition of the letter ‘a’ at the beginning of the word ‘aava’. In that regard, it should be pointed out that the applicant has not put forward any argument refuting the Board of Appeal’s assessment, set out in paragraph 29 of the contested decision, that the relevant consumer will, in the present case, and in accordance with settled case-law, generally take more note of the beginning of a sign than of its end (see, in that regard, Joined Cases T‑183/02 and T‑184/02 El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II‑965, paragraph 81, and Case T‑112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II‑949, paragraphs 64 and 65).

47 Next, the applicant has not put forward any argument calling into question the case-law, set out by the Board of Appeal in paragraph 29 of the contested decision and recalled by OHIM at the hearing, that the differences, although slight, between the signs may lead to a different overall impression where those signs are made up of short words, as in the present case, namely the short words ‘java’ and ‘aava’. In that regard, it should be noted that the difference in the overall impression created by those two words is all the more significant since the first word ‘aava’ is a four-letter word including three ‘a’s, whereas the word ‘java’ only has two. Moreover, the fact that a four-letter word includes three ‘a’s is visually striking in all Union languages.

48 Lastly, as the Board of Appeal found, also in paragraph 29 of the contested decision, the word ‘mobile’ adds a difference between the signs in question. As stated in paragraph 42 above and contrary to what the applicant claims, that word cannot be disregarded when comparing the signs in question.

49 In the light of the considerations set out in paragraphs 44 to 48 above, it must be found, as the Board of Appeal did and contrary to what the applicant claims, that the signs in question, assessed as a whole, are not visually similar.

50 In the third place, so far as concerns the phonetic comparison of the signs in question, the applicant disputes the Board of Appeal’s finding, in paragraph 30 of the contested decision, that those signs have only a low level of similarity. According to the applicant, there is a high degree of phonetic similarity between those signs.

51 In that regard, it must be found that, as the Board of Appeal rightly observed in paragraph 30 of the contested decision, the earlier mark and the first word element of the mark applied for are made up of two syllables, that is to say, on the one hand, ‘ja’ and ‘va’ in respect of the earlier mark and, on the other, ‘aa’ and ‘va’ in respect of the first word element of the mark applied for. It should also be noted that the second syllable of those two word elements – ‘va’ – is common to the signs at issue.

52 However, it should also be pointed out that the resemblances, set out in paragraph 51 above, are completely offset by the significant differences between those signs.

53 On the one hand, the letters ‘j’ and ‘a’, at the beginning of the first syllable of the word elements of the marks in question, are pronounced differently, irrespective of the Union language used. The applicant’s arguments in that regard that (i) the pronunciation of the letter ‘j’ in Spanish is guttural; (ii) the letter ‘j’ is pronounced, in German and Greek, like the ‘y’ in ‘yes’; and (iii) less attention is paid to the first letter of a word, are not convincing. Those arguments do not cast doubt on the finding that, even in those languages, the syllables ‘ja’ and ‘aa’, which are the first syllables spoken in the mark applied for and the earlier mark respectively, have a different sound, as OHIM rightly claimed at the hearing. Moreover, it must be found in that regard that that difference is emphasised by the fact that, in accordance with the case-law cited in paragraph 46 above, the relevant consumer will generally take more note of the beginning of a sign than of its end.

54 On the other, it should be borne in mind that, having regard to the word element ‘mobile’, which cannot be disregarded, as stated in paragraph 42 above, the mark applied for has, depending on the language spoken, two or three syllables more than the earlier mark. Only one syllable – ‘va’ – out of four or five syllables which make up the mark applied for is common to the signs in question, depending on the Union language used. In those circumstances, the presence of the only common syllable ‘va’ in the signs in question is not, having regard to the total number of syllables in the mark applied for, sufficient to conclude that those signs are phonetically similar.

55 In the light of the findings set out in paragraphs 51 to 54 above, the Court finds that, phonetically, the signs in question, assessed as a whole, exhibited neither a low degree of similarity, as the Board of Appeal found, nor a high degree of similarly, as the applicant claims, but that they are dissimilar.

56 In the fourth place, having regard to the conceptual comparison of the signs in question, the applicant disputes the Board of Appeal’s assessment, in paragraph 31 of the contested decision, that they are different.

57 So far as concerns the mark applied for, it must be stated that the applicant does not dispute the Board of Appeal’s assessment that, as stated in paragraph 37 above, the first word element of that mark, that is to say ‘aava’, has no particular meaning for the majority of the relevant public, with the exception of the Finnish‑speaking members of the public and for whom that word means ‘open’, ‘expansive’ or ‘wide’ and, moreover, the word ‘mobile’ will be understood by a large section of the relevant public as describing certain goods and services relating to telecommunications and computer hardware covered by the mark applied for. It must therefore be found that, for the very large majority of the relevant public, which does not understand Finnish, the mark applied for, taken as a whole, has no particular meaning but will call to mind, on account of the word ‘mobile’, telecommunications and mobile device hardware and services.

58 With regard to the earlier mark, the applicant claims that the Board of Appeal was wrong to consider that the relevant public will associate the earlier mark with the Indonesian island of Java on account of, inter alia, the reputation of its coffee. In that regard, the applicant stated at the hearing that it was likely that the relevant public has not heard of that island, unlike the island of Bali, which is a popular tourist destination, or that, having regard to the reputation of the earlier mark, it will associate the word ‘java’ with goods and services in the telecommunications sector.

59 The applicant’s argument in that regard is not, however, convincing. On the one hand, the fact that the island of Bali is more widely known by the relevant public than the island of Java has, in any event, no bearing on the Board of Appeal’s finding that the relevant public will associate the word ‘java’ with the Indonesian island, which it will have heard of either on account of, in particular, the coffee it produces, or as a tourist destination, as OHIM observed at the hearing.

60 On the other, it should be noted that the reputation of a mark has no bearing on how its conceptual content is perceived. In the present case, the fact that the relevant consumer recognises the mark ‘java’ does not preclude him from associating with the island of Java, on the ground that that mark refers, conceptually, to that island.

61 It therefore follows from the considerations set out in paragraphs 57 to 60 above that the mark applied for will evoke, for the Finnish-speaking part of the relevant public, the words ‘open’, ‘expansive’ or ‘wide’ and telecommunications and mobile device hardware or services and, for the non-Finish-speaking part of the relevant public, only the latter services and hardware. Moreover, the earlier mark, in all Union languages, will refer to the island of Java.

62 In those circumstances, the Court finds that the signs at issue each have a different meaning. In that regard, it should be noted that, even if the relevant consumer did not associate the earlier mark with the island of Java, the fact remains, in any event, that the signs in question are not conceptually similar.

63 In the fifth place, with regard to the overall assessment of the signs in question, the applicant disputes the Board of Appeal’s assessment, in paragraph 34 of the contested decision, that those signs are not similar.

64 It is apparent from the findings set out in paragraphs 49, 55 and 62 above, namely that the signs in question are visually, phonetically and conceptually dissimilar, that the signs are not similar, as the Board of Appeal rightly found. In those circumstances, the Board of Appeal’s error in considering that the signs in question have a low level of phonetic similarity (see paragraph 55 above) is not such as to render the contested decision unlawful.

65 In addition, it must be found in that regard that the applicant’s reference in its written pleadings to a decision of the Opposition Division in a case concerning the likelihood of confusion between the signs LAVASOFT and AVASOFT cannot call into question the conclusion set out in paragraph 64 above. Neither the Board of Appeal nor the Court is bound by decisions adopted by OHIM’s Opposition Division. Moreover, those signs bear no relation to the signs examined by OHIM and the Court in the present proceedings.

66 In the light of all the foregoing considerations, the applicant’s argument that the Board of Appeal was wrong in finding that the marks in question are dissimilar must be rejected.

– Overall assessment of the likelihood of confusion

67 The applicant claims that there is a likelihood of confusion between the signs in question because of the massive reputation and very high degree of distinctiveness of the earlier mark, the identity of the goods and services they cover, and their similarity.

68 It should be borne in mind that, according to the case-law set out in paragraph 21 above, a likelihood of confusion presupposes that the conditions that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar are both met.

69 In the present case, it is not disputed that the goods and services covered by the signs in question are identical (see paragraph 23 above) and that the earlier mark has a massive reputation, as the Board of Appeal observed in paragraph 18 of the contested decision. However, as has been established in paragraph 64 above, those signs are not similar.

70 Accordingly, as the Board of Appeal held, in paragraph 37 of the contested decision, the fact that, on the one hand, the earlier mark has a massive reputation and, on the other, the goods and services covered by the signs in question are identical, does not, however, given the absence of similarity between the signs in question, allow the conclusion to be drawn that there is a likelihood of confusion between them.

71 The Court must reject the applicant’s argument that the Board of Appeal should, like the Court in Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, and Case T‑434/07 Volvo Trademark v OHIM – Grebenshikova (SOLVO) [2009] ECR II‑4415, have concluded that there is a likelihood of confusion between the signs in question, given the similarity of the marks in question on one of the three relevant visual, phonetic or conceptual aspects. That argument is based on the erroneous premiss, as has been established in paragraph 55 above, that there is a low degree of phonetic similarity between the marks in question. Since there is no visual, phonetic or conceptual similarity between the signs in question, the circumstances of the present case bear no relation to those in the two cases cited.

72 In the light of all the foregoing, the Court finds, first, like the Board of Appeal, that there is no likelihood of confusion between the signs in question and, second, that the applicant’s argument in that regard must be rejected.

73 Consequently, the first plea in law must be rejected as unfounded.

The second plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009

74 The applicant claims that, given the massive reputation of the earlier mark, the fact that the signs in question are very similar and that the goods and services covered by those signs are identical, the Board of Appeal should have found that the conditions laid down in Article 8(5) of Regulation No 207/2009 have been met for the mark applied for to be refused registration.

75 OHIM disputes that argument.

76 According to settled case-law, in order for an earlier trade mark to be afforded the broader protection of Article 8(5) of Regulation No 207/2009, a number of conditions must be met including, in particular, the marks at issue must be identical or similar and the earlier mark must have a reputation (Case T‑215/03 Sigla v OHIM – Elleni Holding (VIPS) [2007] ECR II‑711, paragraphs 34 and 35, and Case T‑150/04 Mülhens v OHIM – Minoronzoni (TOSCA BLU) [2007] ECR II‑2353, paragraphs 54 and 55).

77 In the present case, it must be observed that, while it is not disputed, as stated in paragraph 69 above, that the earlier mark has a massive reputation and that the goods and services covered by the signs in question are identical, it is apparent, however, from a comparison of the signs at issue, set out in paragraphs 28 to 66 above, that they are not similar. In those circumstances, the condition that the marks at issue be identical or similar has not been met in the present case.

78 It follows from the finding in paragraph 77 above that the second plea in law must be rejected as unfounded.

79 In the light of all the foregoing considerations, the action must be dismissed in its entirety.

Costs

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

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1. Dismisses the action;

2. Orders Oracle America, Inc. to pay the costs.

Dittrich

Schwarcz

Tomljenović

Delivered in open court in Luxembourg on 27 March 2014.

[Signatures]

* Language of the case: English.