JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
18 May 2018 (*)
(EU trade mark — Opposition proceedings — Application for the EU word mark teaespresso — Earlier international figurative mark TPresso and earlier international word mark TPRESSO — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑68/17,
Italytrade Srl, established in Bari (Italy), represented by N. Clemente, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Tpresso SA, established in Zürich (Switzerland), represented by L. Biglia and R. Spagnolli, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 29 November 2016 (Case R 1099/2016‑4), relating to opposition proceedings between Tpresso and Italytrade,
THE GENERAL COURT (Fifth Chamber),
composed of D. Gratsias, President, A. Dittrich and P.G. Xuereb (Rapporteur), Judges,
Registrar: X. Lopez Bancalari, Administrator,
having regard to the application lodged at the Court Registry on 1 February 2017,
having regard to the response of EUIPO lodged at the Court Registry on 31 July 2017,
having regard to the response of the intervener lodged at the Court Registry on 20 July 2017,
further to the hearing on 8 February 2018,
gives the following
Judgment
Background to the dispute
1 On 10 December 2014, the applicant, Italytrade Srl, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the word sign teaespresso.
3 The goods in respect of which registration was sought are in Class 30 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 to the following description: ‘Coffee, teas and cocoa and substitutes therefor’.
4 The EU trade mark application was published in European Union Trade Marks Bulletin No 2014/241 of 22 December 2014.
5 On 19 March 2015, the intervener, Tpresso SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the following earlier rights (‘the earlier marks’):
– international registration No 1205427, designating the European Union, of the word mark TPRESSO, which was registered on 13 February 2014 and covers goods in Classes 11 and 30 corresponding, for each of those classes, to the following description:
– Class 11: ‘Machines for the preparation of hot beverages, particularly pressurized steam and hot-water injection machines for preparing non-medicinal infusions and teas from capsules’;
– Class 30: ‘Non-medicinal infusions and teas in the form of capsules’;
– international registration No 1077699, designating the European Union, of the figurative mark reproduced below, which was registered on 15 December 2010 and covers goods in Classes 11 and 30 corresponding, for each of those classes, to the following description:
– Class 11: ‘Machines for the preparation of hot beverages; machines for the preparation of hot beverages, particularly machines for injecting hot water and pressurized steam for the preparation, from capsules, of non-medicinal infusions and teas’;
– Class 30: ‘Teas; non-medicinal infusions and herbal teas; tea extracts; tea-based preparations and beverages; non-medicinal infusions, herbal teas and teas in capsules, preparations and beverages made with tea in capsules’.
7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001).
8 On 20 April 2016, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009.
9 On 15 June 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
10 By decision of 29 November 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. First, it confirmed that the relevant territory was the European Union and that the relevant public consisted of the general public, the level of attention of which was average. Secondly, it found that the goods covered by the mark applied for and those covered by the earlier marks were in part identical and in part similar. Thirdly, it took the view that the signs at issue were visually similar at least to an average degree, that those signs were highly similar, or even identical, phonetically and that the conceptual comparison was neutral. Fourthly, it stated that the inherent distinctive character of the earlier marks was normal.
11 In view of all of those factors, it found that there was a likelihood of confusion on the part of the relevant public. Since it was upholding the opposition on the basis of the ground for opposition provided for in Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal took the view that there was no need to examine the ground for opposition provided for in Article 8(5) of Regulation No 207/2009, on which the intervener had relied.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– reject definitively and in its entirety the opposition filed against the registration of the mark applied for in respect of the goods in Class 30;
– order EUIPO and the intervener to pay the costs, including those incurred in the proceedings before the Board of Appeal and the Opposition Division.
13 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
14 The intervener contends that the Court should:
– dismiss the action;
– confirm the contested decision and refuse to register the mark applied for;
– order the applicant to pay the costs, including those incurred in the proceedings before the Board of Appeal.
15 As the applicant informed the Court that it would not be present at the hearing, the hearing took place in the absence of that party, pursuant to Article 108(1) of the Rules of Procedure of the General Court.
Law
16 As regards the applicant’s argument that the opposition based on Article 8(5) of Regulation No 207/2009 is unfounded, it is sufficient to note at the outset, as observed by EUIPO, that the Board of Appeal upheld the opposition based on Article 8(1)(b) of Regulation No 207/2009, which had been brought by the intervener, on the basis of the earlier marks without examining the other ground relied on, namely that relating to Article 8(5) of Regulation No 207/2009. Since the purpose of actions before the Court is to review the legality of the decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001) (judgment of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 123), the Court cannot examine the applicant’s arguments relating to the reputation of the earlier marks, which is a matter on which the Board of Appeal did not rule. Those arguments are therefore inadmissible.
17 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 must not 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. Furthermore, under Article 8(2)(a)(iv) of Regulation No 207/2009 (now Article 8(2)(a)(iv) of Regulation 2017/1001), ‘earlier trade marks’ means trade marks registered under international arrangements which have effect in the European Union with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
18 According to settled case-law, the risk that the public may 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 the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question 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 and services covered (see judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraphs 16, 17 and 29 and the case-law cited, and of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
19 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the 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 judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
20 It must be pointed out that the applicant does not dispute either the Board of Appeal’s finding that the relevant territory is the European Union or its finding that the relevant public consists of the general public, the level of attention of which is average. The applicant does not, in addition, dispute the Board of Appeal’s finding that the goods at issue are identical or similar.
21 By contrast, the applicant disputes the Board of Appeal’s assessments relating to the similarity of the signs at issue and the existence of a likelihood of confusion.
The comparison of the signs at issue
22 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
23 At issue in the present case are, on the one hand, the word mark applied for teaespresso and, on the other hand, the earlier word mark TPRESSO and the earlier figurative mark consisting of the same word element ‘tpresso’ represented in a stylised manner (see paragraph 6 above).
The visual similarity
24 First of all, the Board of Appeal observed that it was irrelevant whether the word elements of the marks at issue were written in upper-case letters or lower-case letters. As regards the earlier figurative mark, it added that the letter ‘t’ in the element ‘tpresso’ was represented in a stylised way with a wavy bar and a small line above that bar, but that that letter remained recognisable and that, in addition, the remaining letters were written in a rather standard font.
25 Secondly, the Board of Appeal found that the signs at issue coincided in the letters ‘t’, which were placed at the beginnings of those signs, and in the groups of letters ‘presso’, which constituted the endings of those signs, and that they differed in the additional group of letters ‘eaes’ in the mark applied for. The Board of Appeal concluded that the signs at issue were visually similar to at least an average degree.
26 The applicant submits that the signs at issue are visually different. As regards the comparison between the mark applied for and the earlier word mark the applicant maintains, first, that the Board of Appeal did not take into consideration the fact that the mark applied for consists of eleven letters whereas the earlier word mark contains only seven letters. Secondly, it submits that the Board of Appeal did not take into account the fact that the mark applied for consists of lower-case letters, whereas the earlier word mark consists of upper-case letters, and it maintains that that difference in their written forms is highly relevant as regards the overall visual impression of the signs at issue. Thirdly, it submits that the presence of the group of four additional letters ‘eaes’ in the mark applied for means that that mark creates a visual impression that is entirely different from that of the earlier word mark. As regards the comparison between the mark applied for and the earlier figurative mark, the applicant adds that the overall visual impression created by the earlier figurative mark is distinguished by the letter ‘t’, which is depicted in a stylised manner. Furthermore, it submits that the group of letters ‘presso’ was registered in a non-standard font.
27 EUIPO and the intervener dispute the applicant’s arguments.
28 According to settled case-law, as regards a mark containing word elements, consumers generally pay greater attention to the beginning of a mark than to the end. Nevertheless, it must be pointed out that that finding cannot apply in all cases and that it cannot call into question the principle that the examination as to whether the marks are similar must take account of the overall impression created by those marks, since the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see, to that effect, judgment of 13 July 2017, Migros-Genossenschafts-Bund v EUIPO — Luigi Lavazza (CReMESPRESSO), T‑189/16, not published, EU:T:2017:488, paragraph 48 and the case-law cited).
29 Furthermore, the presence, in each of the marks at issue, of several letters in the same order may be of some importance in the assessment of the visual similarities between those marks (see judgment of 6 April 2017, Azanta v EUIPO — Novartis (NIMORAL), T‑49/16, not published, EU:T:2017:259, paragraph 38 and the case-law cited).
30 In the present case, as regards, first, the comparison between the mark applied for and the earlier word mark, it must be stated that the signs at issue have the same structure inasmuch as they consist of a single word element. Those signs have the letter ‘t’, which marks the respective beginnings of those signs, in common and have the same ending, namely the group of six letters ‘presso’. Furthermore, it must be stated that all the letters in the earlier mark are included in the mark applied for. Those factors, as a whole, are, in the light of the case-law cited in paragraphs 28 and 29 above, capable of creating visual similarity.
31 Moreover, it must be pointed out that the difference between the marks at issue is confined to the presence of four additional letters, ‘e’, ‘a’, ‘e’ and ‘s’, in the middle section of the mark applied for. Contrary to what the applicant claims, the presence of those additional letters in the mark applied for is not sufficient to rule out any similarity between the signs at issue.
32 As regards the applicant’s argument that the Board of Appeal should have taken into account the fact that the word signs at issue are written in upper-case and lower-case letters, it is sufficient to state, as observed by EUIPO and the intervener, that, according to settled case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element. Consequently, the protection which results from the registration of a word mark applies to the word stated in the application for registration and not to the graphic or stylistic characteristics which that mark might have (see judgment of 3 December 2015, TrekStor v OHIM — Scanlab (iDrive), T‑105/14, not published, EU:T:2015:924, paragraph 59 and the case-law cited). The Board of Appeal was therefore right in finding, in paragraph 23 of the contested decision, that it was irrelevant for the purposes of comparing the word signs at issue whether they were written in upper- or lower-case letters.
33 As regards, secondly, the comparison between the mark applied for and the earlier figurative mark, it is sufficient to point out that the earlier figurative mark consists of the same word element as the earlier word mark, with the result that the findings set out in paragraphs 30 and 31 above also apply. In that regard, first, the stylisation of the letter ‘t’, although it is capable of attracting the consumer’s attention, is not, however, as EUIPO submits, such as to prevent the identification of that letter. Secondly, the Court cannot concur with the applicant’s argument, which is not, moreover, substantiated, that the font used for the element ‘presso’ is not a standard font. It is sufficient to state that the group of letters ‘presso’ is legible and can easily be recognised by consumers. Consequently, the similarity between the signs at issue that arises from the similarity of their word elements cannot be called into question by those stylistic elements.
34 It must be held that the Board of Appeal was right in finding that there was at least an average degree of visual similarity between the signs at issue.
The phonetic similarity
35 In paragraph 26 of the contested decision, the Board of Appeal found that, depending on the language used, the mark applied for would be pronounced as ‘tea-espresso’ or ‘teas-presso’ and the earlier marks would be pronounced as ‘tee-presso’ or ‘tè-presso’. It found that the phonetic similarity varied from highly similar to, as in English, nearly identical.
36 The applicant maintains that the assessment of the phonetic similarity which the Board of Appeal carried out in the contested decision is incorrect. First of all, it submits that the phonetic impression conveyed by a sign is particularly shaped by the number and sequence of syllables of which it consists. It takes the view that the signs at issue are made up of a different number of syllables and letters. In that regard, it maintains that the Board of Appeal’s reference solely to English is incorrect and that it is, in any event, unfounded on the ground that, in that language, the mark applied for will be broken down into four syllables whereas the earlier marks will be broken down into only two syllables.
37 Next, the applicant submits that the marks at issue differ in the presence of the group of consonants ‘tpr’ at the beginning of the word element of the earlier marks. Furthermore, it takes the view that the differences between the initial parts of the signs at issue are crucial since consumers tend to focus their attention on the initial part of a sign.
38 Lastly, the applicant submits that, in the mark applied for, the first three letters evoke the word ‘tea’, whereas the rest of the letters evoke the Italian word ‘espresso’. It maintains that the fact that those words may be deduced results in a specific phonetic perception of the mark applied for which is not in any way echoed by the earlier marks.
39 EUIPO and the intervener dispute the applicant’s arguments.
40 In that regard, it must be stated that the mark applied for must be compared with the element ‘tpresso’, which constitutes the earlier word mark and the word element of the earlier figurative mark. First of all, it must be pointed out that all the letters making up the word element of the earlier marks are included in the mark applied for. Furthermore, those letters are in the same position in the marks at issue. The letter ‘t’ is the first letter in each of the signs at issue and the six letters ‘p’, ‘r’, ‘e’, ‘s’, ‘s’, and ‘o’, in the same order, form their final part.
41 Next, it must be stated, first, that the pronunciations of the initial part ‘tea’ in the mark applied for and the first letter, ‘t’, in the earlier marks, are highly similar for a large section of the consumers in the European Union, in particular for English-speaking consumers or consumers who have a basic knowledge of English. In this respect, the Board of Appeal did not err in referring to the English public in finding that, with regard to that public, the pronunciation of the signs at issue was nearly identical.
42 Secondly, it must be pointed out that the same word element, ‘presso’, is in each of the final parts of the signs at issue and will be pronounced in the same way by the relevant public.
43 It is true that, in contrast to the earlier marks, the mark applied for has four additional letters, namely the letters ‘e’, ‘a’, ‘e’ and ‘s’, in its middle section, which results in a difference in the syllabic structure of the signs at issue.
44 However, it must be pointed out that that difference in the syllabic structure of the signs at issue does not have the effect that it dispels the marked phonetic similarity between the marks at issue, as the phonetic similarity must be assessed on the basis of the overall impression produced by their full pronunciation (see, to that effect, judgment of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 85).
45 Furthermore, as regards the argument relating to the phonetic impression conveyed by the group of consonants ‘tpr’ which the applicant identifies in the earlier marks, it must be pointed out, as observed by EUIPO, that that group of consonants will not be pronounced naturally by consumers and cannot be regarded as forming a syllabic whole which is relevant for the purpose of assessing the phonetic impression produced by the signs at issue. Moreover, that argument on the part of the applicant contradicts its observation regarding the syllabic structure of the signs at issue in English, from which it is apparent that English consumers do not pronounce the group of consonants ‘tpr’ as such, but break it down into two syllables.
46 Lastly, as regards the argument relating to the identification of the terms ‘tea’ and ‘espresso’ in the mark applied for, it is sufficient to point out that the applicant does not explain in what way the identification of those terms will lead the relevant public to pronounce that mark in a specific way. Furthermore, the Board of Appeal was right in examining, in paragraph 26 of the contested decision, the phonetic impression created by the signs at issue as a whole.
47 It follows from the above considerations that the Board of Appeal was right in finding, essentially, in paragraphs 26 and 33 of the contested decision, that the signs at issue were for the relevant public highly similar phonetically, or even, as regards English consumers, phonetically almost identical.
The conceptual similarity
48 In paragraph 27 of the contested decision, the Board of Appeal pointed out that, as the marks at issue did not have a meaning in any of the Member States of the European Union, the conceptual comparison was neutral. It stated that the fact that those marks might be derived from the concepts of ‘tea’ and ‘espresso’ did not alter that conclusion.
49 The applicant submits that the mark applied for does have a meaning in the Member States of the European Union since it evokes the concepts of ‘tea’ and ‘espresso’. It maintains that that mark is the combination of the English word ‘tea’ and the word ‘espresso’, which commonly designates Italian coffee and its method of production. By contrast, it takes the view that the word element ‘tpresso’ in the earlier marks is fanciful and does not have any connection with tea or Italian coffee, with the result that it cannot be given a meaning that is capable of referring to the same concepts as those associated with the mark applied for.
50 EUIPO and the intervener dispute the applicant’s arguments and submit that the Board of Appeal was right in finding that none of the marks had any clear meaning for the relevant public and that the conceptual comparison remained neutral.
51 EUIPO also maintains that, even assuming that a conceptual comparison were possible, it would have to be held that the earlier marks have the same, or partially the same, meaning as the mark applied for, given that the element ‘presso’, which constitutes the middle and the ending of the word ‘espresso’, is an important part both of the mark applied for and of the earlier marks.
52 The intervener takes the view, as it submitted, in particular, at the hearing, that the mark applied for is descriptive of some of the goods in Class 30 in respect of which its registration has been sought. By contrast, it maintains that the earlier marks are fanciful and do not refer to those goods.
53 It must be pointed out that, although the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, he will break it down into word elements which, for him, suggest a specific meaning or which resemble words known to him. Furthermore, the relevant consumer will break down the word sign even if only one of its elements is familiar to him (see judgment of 19 September 2012, TeamBank v OHIM — Fercredit Servizi Finanziari (f@ir Credit), T‑220/11, not published, EU:T:2012:444, paragraph 38 and the case-law cited).
54 In that regard, it must be pointed out, as the applicant submits, that consumers are likely to recognise, in the mark applied for, a word which is commonly used and easily understood by a large part of the relevant public, namely the Italian word ‘espresso’. That is a fortiori true of consumers who will be able to identify the addition, to the word ‘espresso’, of the English word ‘tea’ in the initial part of that mark. It must also be held that the word ‘espresso’ is commonly used throughout the European Union to refer, in a general manner, to a coffee-based beverage and, in particular, as the applicant points out, to a short, strong coffee made according to the Italian method.
55 It must be pointed out that the earlier marks include the component ‘presso’, which is also likely to evoke the idea of an ‘espresso’ in the mind of the average consumer (see, to that effect and by analogy, judgment of 13 July 2017, CReMESPRESSO, T‑189/16, not published, EU:T:2017:488, paragraph 73).
56 It follows from the foregoing that, contrary to what the Board of Appeal found, the signs at issue are likely to have a meaning for the relevant public which is capable of deducing the term ‘espresso’ from those signs and are therefore likely partially to converge in meaning, owing to their evocation of a short, strong espresso coffee.
57 However, it must be stated that that error on the part of the Board of Appeal in the contested decision is not capable of calling into question the assessment relating to the similarity between the signs at issue, since it must be observed that, instead of the conceptual comparison of the signs being found to be neutral, there is an average degree of conceptual similarity between those signs.
The likelihood of confusion
58 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or 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 (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
59 In paragraph 32 of the contested decision, the Board of Appeal found that, since the earlier marks did not have any meaning with regard to the goods concerned, their inherent distinctive character was normal.
60 In paragraph 33 of the contested decision, the Board of Appeal found that, taking into account the identity and similarity of the goods at issue, the at least average degree of visual similarity and the high degree of phonetic similarity of the signs at issue, the normal degree of inherent distinctiveness of the earlier marks and the average level of attention of the relevant public, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
61 The applicant submits, in essence, that the Board of Appeal did not provide a sufficient statement of reasons for its finding relating to the existence of a likelihood of confusion because it did not take into account all the elements relevant to the comparison. In that regard, it confines itself to reiterating, first, the signs at issue are not visually and phonetically similar and, secondly, that the earlier marks do not refer to any concept. It also submits that the goods covered by the marks at issue are mainly sold in ways that enable the purchaser to see those marks, namely in supermarkets and on the Internet, with the result that any phonetic similarities would be irrelevant. It adds, in the context of the arguments disputing that the earlier marks have a reputation, that those marks have, in actual fact, little about them that is inherently distinctive.
62 EUIPO and the intervener dispute the applicant’s arguments.
63 It must be pointed out at the outset that, in accordance with what has been stated in paragraph 20 above, the goods at issue are identical or similar.
64 First of all, as regards the applicant’s claims that the Board of Appeal did not, in comparing the marks, take into account all the elements of which they consist, it must be observed that those claims are not in any way substantiated. In any event, it must be pointed out, as is apparent from paragraphs 31 to 33 of the contested decision, that the Board of Appeal did carry out a global assessment of the relevant elements before finding that there was a likelihood of confusion.
65 Since those claims may be interpreted as seeking, in essence, to dispute the conclusions to which the Board of Appeal came regarding the similarity of the signs at issue, they must be rejected. In view of the findings which have already been set out in paragraphs 34 and 47 above, there is, first, at least an average degree of visual similarity between the signs at issue. Secondly, the signs at issue are very similar phonetically, or even, as regards English-speaking consumers or consumers with a sufficient knowledge of English, phonetically almost identical. Thirdly, as has been stated in paragraphs 53 to 56 above, there is an average degree of conceptual similarity between those signs.
66 Secondly, regarding the argument relating to the allegedly weak distinctive character of the earlier marks, an argument which has not, moreover, in any way been substantiated by the applicant, it must be borne in mind that the Board of Appeal erred in finding that those marks did not have any meaning. However, the fact that the average consumer is likely to identify the term ‘espresso’ in the earlier marks does not, in the light of the goods covered by the earlier marks which are, in essence, tea, herbal teas and infusions and machines for the preparation of hot beverages, in particular of tea and infusions, affect the conclusion which the Board of Appeal reached, namely that the distinctive character of the earlier marks was normal.
67 In any event, even if it were necessary to characterise the distinctive character of the earlier marks as weak, it is sufficient to state that, according to settled case-law, although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited), which is the case here, as has been stated in paragraphs 63 and 65 above.
68 Lastly, the applicant’s argument relating to the selling arrangements for the goods at issue cannot succeed. According to the case-law, the extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by those signs are marketed. If the goods covered by the marks in question are usually sold in stores in which consumers choose the goods themselves and must therefore rely primarily on the image of the trade mark applied to the goods, the visual similarity between the signs will as a general rule be more important (judgment of 6 October 2004, New Look v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 49).
69 In that regard, it must be admitted that the goods at issue, which are in Classes 11 and 30, as stated in paragraph 6 above, are generally sold in stores, with the result that the visual similarity between the signs at issue may, pursuant to the case-law cited in paragraph 68 above, be more important. However, the applicant errs in its reading of that case-law when it deduces that, consequently, the phonetic aspect is of only little relevance, or even irrelevant, in that context. Moreover, the applicant’s argument is based on the incorrect premiss that the signs at issue are visually different, since, as has been pointed out in paragraph 34 above, there is at least an average degree of visual similarity between them. The applicant’s argument must therefore, in any event, be rejected.
70 In view of all of the foregoing, it must be held that the Board of Appeal was right in finding that there was a likelihood of confusion on the part of the average consumer.
71 It follows that the plea in law put forward by the applicant, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected.
72 Given that the plea in law put forward by the applicant in support of its claims both for annulment and for alteration is unfounded, the action must be dismissed in its entirety.
Costs
73 Under Article 134(1) 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.
74 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
75 As regards the intervener’s claim that the applicant should be ordered to pay the costs of the proceedings before the Board of Appeal, it is sufficient to point out that, since the present judgment is dismissing the action brought against the contested decision, it is point 2 of the operative part in the contested decision which continues to determine the costs in question.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders Italytrade Srl to pay the costs.
Delivered in open court in Luxembourg on 18 May 2018.