JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
24 October 2017 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark coffee inn — Earlier national figurative mark coffee in — 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) — Genuine use of the earlier mark — Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001))
In Case T‑202/16,
UAB Keturi kambariai, established in Vilnius (Lithuania), represented by R. Pumputienė, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Lukošiūtė, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being:
OÜ Coffee In, established in Tallinn (Estonia), represented by P. Lätt, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 3 March 2016 (Case R 137/2015-4), relating to opposition proceedings between Coffee In and Keturi kambariai,
THE GENERAL COURT (Fourth Chamber),
composed of H. Kanninen, President, L. Calvo-Sotelo Ibáñez-Martín and I. Reine (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 3 May 2016,
having regard to the response of EUIPO lodged at the Court Registry on 23 August 2016,
having regard to the response of the intervener lodged at the Court Registry on 29 August 2016,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 9 January 2013, the applicant, UAB Keturi Kambariai, 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 following figurative sign:
3        The services in respect of which registration was sought are in Classes 35 and 43 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 35: ‘Bringing together, for others, of a variety of goods (excluding the transport thereof), namely beverages, coffee, artificial coffee, enabling customers to conveniently view and purchase those goods from wholesale and retail outlets, mail order catalogues, websites and teleshopping channels’;
–        Class 43: ‘Services for providing food and drink’.
4        On 13 June 2013, the intervener, OÜ Coffee In, filed a notice of opposition to registration of the mark applied for in respect of the services referred to in paragraph 3 above, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001).
5        The opposition was based, in particular, on Estonian trade mark No 41 986, registered on 8 December 2005 and renewed until 8 December 2025, reproduced below:
6        The earlier mark designates in particular goods and services in Classes 30 and 43 which correspond, for each of those classes, to the following description:
–        Class 30: ‘Coffee and products containing coffee; coffee-based beverages; coffee flavourings; coffee substitutes’;
–        Class 43: ‘Food and drink catering; cafes, bars, bistros, fast food outlets; temporary accommodation, including hotels, motels, guest houses’.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        At the applicant’s request, and in reply to EUIPO’s invitation to that effect, the intervener furnished proof of use, in particular, of the earlier trade mark.
9        On 28 November 2014, the Opposition Division upheld the opposition partly for the services falling within Classes 35 and 43 referred to in paragraph 3 above and rejected the EU trade mark application for those services.
10      On 15 January 2015, 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 Opposition Division’s decision, inasmuch as it upheld the opposition.
11      By decision of 3 March 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, it held that the evidence submitted by the intervener, taken as a whole, showed the genuine use of the earlier trade mark in Estonia during the relevant period for the purpose of selling coffee, drinks and food and for the provision of coffee bar services.
12      Concerning the likelihood of confusion, the Board of Appeal essentially held that the services at issue were partly identical and partly similar to an average degree and that the signs at issue were visually and conceptually similar to an average degree and highly similar phonetically. According to the Board of Appeal, there is a likelihood of confusion on the part of the relevant public in Estonia, given the average degree of distinctiveness of the earlier mark.
Procedure and forms of order sought
13      By application lodged at the Court Registry on 3 May 2016, the applicant brought the present action.
14      The applicant claims that the Court should:
–        annul the contested decision and, consequently, reject the opposition and authorise the registration of the mark applied for;
–        order EUIPO and the intervener to pay the costs relating to the proceedings before the Court and the Board of Appeal.
15      EUIPO contends that the Court should:
–        dismiss the action for annulment in its entirety;
–        order the applicant to pay the costs it incurred.
16      The intervener requests the Court to:
–        dismiss the action;
–        uphold the contested decision;
–        order the applicant to pay the costs of the proceedings before the Court and the Board of Appeal.
Law
17      The applicant relies on two pleas in law, the first alleging infringement of Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001) and the second alleging infringement of Article 8(1)(b) of that regulation.
The first plea in law, alleging infringement of Article 42(2) of Regulation No 207/2009
18      In the first plea, the applicant alleges a lack of evidence of genuine use of the earlier mark for the goods in Class 30 and inadequate evidence of such use for the services falling within Class 35.
19      First, as regards the existence or otherwise of evidence of the use of the earlier mark for the goods in Class 30, it must be stated that, in the present case, the Board of Appeal held that there was a likelihood of confusion between the marks at issue after having made a comparison between the services in Classes 35 and 43 covered by the mark applied for and the services in Class 43 covered by the earlier mark.
20      Accordingly, the complaint that there is no evidence of genuine use of the earlier mark in respect of goods in Class 30 is ineffective. As EUIPO correctly noted, even assuming that the genuine use of the earlier trade mark for the goods in Class 30 had not been shown, it would have no influence on the final findings of the Board of Appeal concerning the existence of a likelihood of confusion between the marks at issue.
21      Secondly, as regards the alleged inadequacy of the evidence of genuine use of the earlier mark for the services in Class 35, EUIPO disputes the admissibility of that claim inasmuch as the applicant did not rely on any specific argument challenging the Board of Appeal’s findings concerning the services in Class 43 but not those in Class 35. Accordingly, the question of admissibility must first be considered.
Admissibility
22      The Court finds that the applicant submits its arguments for the services falling within Class 35, even though none of the trade marks relied on by the intervener for the purposes of the opposition were registered for such services, which, consequently, were not examined by the Board of Appeal in the light of the genuine use of the earlier mark.
23      In those circumstances, it may reasonably be assumed that this is a clerical error and that the applicant intended to rely not on the services falling within Class 35 but on the services falling within Class 43 which were actually examined by the Board of Appeal in the contested decision. It must therefore be regarded as raising its complaint, alleging inadequate evidence, in relation to the services in Class 43 and not those in Class 35.
24      It must be borne in mind in that regard that it is sufficient that the subject matter of a party’s application and the main points of fact and law on which it is based are set out sufficiently clearly in the application (see, to that effect, judgments of 16 December 1963, Acciaierie San Michele and Others v High Authority, 2/63 to 10/63, EU:C:1963:59, p. 691, 692, and of 17 June 2003, Seiller v EIB, T‑385/00, EU:T:2003:169, paragraphs 40 to 45), which is the case here.
25      Moreover, the applicant’s argument is sufficiently clear and precise as to enable the defendant and the intervener to prepare their defence and the General Court to exercise its power of review (see, to that effect, judgment of 17 June 2003, Seiller v EIB, T‑385/00, EU:T:2003:169, paragraph 40). EUIPO and the intervener challenge the applicant’s arguments in their entirety, referring to evidence of genuine use of the earlier mark for the services falling within Class 43.
26      It follows from the foregoing that, even though the applicant did not expressly refer to the services in Class 43, its claim, that evidence of genuine use of the earlier mark for the services is inadequate, is admissible.
Substance
27      In essence, the applicant submits that the intervener did not adduce any evidence as to the nature or volume, including the intensity or regularity, of the use of the earlier mark for the services at issue. Furthermore, the applicant notes that no evidence was produced showing that a market share was gained and maintained in respect of those services. The applicant also criticises the failure to give dates on which the alleged use occurred and the lack of evidence from independent sources.
28      EUIPO and the intervener dispute the applicant’s arguments.
29      According to settled case-law, it is apparent from Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001), read in the light of recital 10 of Regulation No 207/2009 (now recital 24 of Regulation 2017/1001) and Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks, unless there is a good commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market. However, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to cases where large-scale commercial use has been made of the marks (see judgment of 17 January 2013, Reber v OHIM — Wedi & Hofmann (Walzer Traum), T‑355/09, not published, EU:T:2013:22, paragraph 25 and the case-law cited).
30      There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (see judgment of 8 July 2014, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 39; see also, to that effect and by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).
31      When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
32      As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (judgments of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 35, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41).
33      In order to examine, in a particular case, whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence of the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42).
34      It is in the light of the foregoing considerations that it is appropriate to assess whether the Board of Appeal correctly held that the documents submitted by the intervener were sufficient as a whole to show genuine use of the earlier trade mark in the European Union, and in view of the conclusion drawn in paragraph 20 above, whether that is the case solely for the services in Class 43.
35      Given that the EU trade mark application filed by the applicant was published on 13 March 2013, the five-year period referred to in Article 42(2) of Regulation No 207/2009 covers, as correctly noted by the Board of Appeal in paragraph 19 of the contested decision, the period from 13 March 2008 to 12 March 2013 inclusive, a point which the parties do not dispute.
36      It should be noted that the evidence provided by the intervener in the administrative proceedings consisted, inter alia, of the following documents:
–        undated screenshots of the website www.coffeein.eu including texts in English;
–        two photographs, each showing a catering establishment bearing the earlier mark;
–        undated screenshots of internet sites in various shopping centres in Estonia setting out different types of information, including photographs of the ‘coffee in’ sales outlets in their respective premises;
–        numerous invoices in Estonian issued between August 2009 and October 2012 for the sale of ‘coffee in’ cups;
–        an undated screenshot of the cherry.ee web page, in Estonian, offering a discount on ‘coffee in’ goods between 11 April 2013 and 12 May 2013;
–        printouts of the intervener’s Facebook page, showing photographs of retail facilities selling food and drinks bearing the earlier trade mark;
–        printouts of the Facebook profile of Olerex, one of the largest petrol station operators in Estonia, dating from 14 February 2013 to 27 February 2013 and written in Estonian, showing coffee cups bearing the earlier mark;
–        extracts from the intervener’s annual reports for the years 2008 to 2011, written in Estonian;
–        printouts of the layout proof prepared by Huhtamaki, Inhouse Design Consultancy, for cups bearing the earlier mark, dated 8 September 2010 and 7 February 2012;
–        undated printouts representing a paper cup and a paper bag, both bearing the earlier mark.
37      In paragraph 22 of the contested decision, the Board of Appeal stated that, taken as a whole, the annual reports, invoices, photographs of the sales outlets run by the intervener in various places in Estonia, the layout proofs and extracts from third-party websites proved a genuine use of the earlier trade mark in Estonia during the relevant period for the sale of coffee, beverages and food and the provision of coffee bar services.
38      It must be stated at the outset that the applicant does not dispute the authenticity or accuracy of the evidence, but only whether it is sufficient to prove the genuine use of the earlier mark.
39      As regards the annual reports provided by the intervener for the period from 2008 to 2011, it should be noted that, in general, annual reports of an undertaking set out its annual financial statement, including its income and expenditure and a profit and loss account, in relation to the previous financial year. In addition, the presentation of such annual reports is generally required by law. Consequently, the importance of those annual reports cannot be denied, with the result that they may serve as valid evidence of an undertaking’s business activity and, in particular, its presence in the economic sector concerned.
40      In the present case, the Board of Appeal noted in paragraph 23 of the contested decision that, according to the 2008 annual reports, the intervener operated 10 cafés in Tallinn (Estonia) and 2 in Tartu (Estonia), had an average of 52.6 employees over the year and that its revenue had increased by 16.22%. For 2009, annual reports indicated the operation of 9 cafes in Tallinn and 3 in Tartu, the employment of 49.6 people on average and a fall in revenue of 8.01%. The figures for 2010 indicated 10 sales outlets in Tallinn and 4 in Tartu, 51 employees and a fall in revenue of 0.24%. The figures for 2011 indicated 21 sales outlets and kiosks, 17 in Tallinn and 4 in Tartu, 66 employees and an increase in revenue of 82.79%.
41      It should be noted, as the Board of Appeal stated, that those figures show the intervener’s sustained, and even increasing, commercial activity during the period from 2008 to 2011 in Estonia in relation to coffee shops. Those annual reports, which are not disputed by the applicant, state that the intervener’s main activity consists in setting up a chain of coffee shops, including the development and management thereof, and offering hot and cold beverages for sale as well as bakery and confectionery products. In addition, the name of the undertaking ‘Coffee IN’ is identical to the word elements in the earlier mark. It is therefore undeniable that the figures mentioned in the aforementioned annual reports relate to its main commercial activity, as described in its annual reports, and that, therefore, those figures could relate to the services protected by the earlier mark.
42      Accordingly, there is no doubt that, according to the annual reports for the years 2008 to 2011, the intervener, for that period, was active in the economic sector in question. The fact that the name of the intervener’s undertaking coincides with the word elements of the earlier mark may also constitute an indication of the use of the earlier mark for the intervener’s main activity and thus for the services forming part of that activity and protected by that mark.
43      As regards the invoices provided by the intervener, it should be noted that the intervener submitted, in total, 153 invoices for the supply of ‘coffee in’ cups, issued by a single undertaking, namely OÜ KoduPaber, addressed to the intervener. Those invoices are dated from August 2009 to the end of October 2012, they indicate different months and are addressed to various ‘coffee in’ outlets in Tartu and Tallinn. Consequently, the Board of Appeal did not err in holding that those invoices confirmed the intervener’s continuing commercial activity.
44      With further regard to those invoices, it should be pointed out that they relate to cups of different sizes bearing the word elements ‘coffee in’ of the earlier mark and setting out the number of the article. Admittedly, those invoices do not mention any service included in Class 43. However, the supply of cups bearing the earlier trade mark to the various sales outlets belonging to the intervener makes it possible to assume, with a reasonable degree of certainty, that those cups were used in the intervener’s commercial activity since they could be considered essential equipment for the sale of coffee and coffee-related beverages as a service.
45      That finding is borne out by the photos published on the websites of the various shopping malls showing ‘coffee in’ cups filled with different types of beverages as well as photographs of sales outlets displaying those cups with various foods. Moreover, the posts on the intervener’s and Olerex’s Facebook pages show those cups often filled with drinks and accompanied by the name of a specific beverage or the image of a product like, for example, chocolate, caramel, or spices such as cinnamon, thus imbuing those beverages with a specific aroma. Accordingly, those photos and posts also make it possible to show the supply of catering services.
46      Consequently, contrary to what the applicant claims, there is evidence to show the nature of the use of the earlier mark in accordance with its essential function, which is to guarantee the identity of the origin of the services for which it was registered.
47      That conclusion is not called into question by the applicant’s argument that there is no tangible evidence showing the dates on which the alleged use occurred.
48      As regards the posts on the intervener’s Facebook page, the Board of Appeal correctly indicated that some of those posts are dated and cover the period from 22 September 2010 to 31 December 2012. As regards the other posts on the intervener’s and on Olerex’s Facebook pages, indicating only the day and the month, and not the year, the Board of Appeal correctly stated that it is well known that Facebook posts appear in chronological order and that those posts clearly date from the period after 31 December 2012, and are therefore from 2013.
49      Moreover, while it is true that the photographs used in those posts do not show the dates on which they were taken, they are not irrelevant as evidence of the genuine use of the earlier mark, given, in particular, a correspondence between the cups set out on those photographs and the layout proofs for the cups dating from 2010 and 2012, which are not challenged by the applicant.
50      Moreover, the applicant’s argument that no substantive evidence from independent sources was provided must be rejected.
51      In that regard, it is enough to note that the photos published on the websites of various shopping centres as well as the posts from Olerex’s Facebook page are without doubt taken from independent sources.
52      As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (see, to that effect, judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41).
53      In that regard, as regards the 153 invoices referred to above, submitted as evidence of genuine use of the earlier mark and of the intervener’s continuing commercial activity, it cannot be excluded, as the intervener points out, that those invoices, which are not consecutively numbered and the dates of which indicate different months, were produced only as examples and that those examples make it possible to conclude with a degree of reasonable certainty that the total level of sales of the goods mentioned in those invoices is actually much higher than the sales specifically mentioned therein.
54      It should be recalled that according to the case-law, the assessment of the extent of use should not rest exclusively on the amount of sales specifically indicated in the invoices (judgment of 16 November 2011, Buffalo Milke Automotive Polishing Products v OHIM — Werner & Mertz (BUFFALO MILKE Automotive Polishing Products), T‑308/06, EU:T:2011:675, paragraph 71).
55      In that regard, the fact that those invoices are addressed to several of the intervener’s sales outlets is also relevant, since it is capable of showing that the use of the earlier trade mark is not limited. It should also be noted that, according to the invoices submitted by the intervener, the quantity of cups delivered to the intervener amounts to 60 000 cups of different sizes during the month of October 2012 alone.
56      Moreover, the figures mentioned in the intervener’s annual reports are equally capable of demonstrating not only continuing commercial activity but also its volume with regard to the use of the earlier mark, taking into account, in particular, the main activity of the intervener mentioned in those annual reports and coinciding with the services protected by that earlier mark.
57      Similarly, it may be inferred from the photographs of the sales outlets operated by the intervener in various places in Estonia that its main activity is quite extensive in that country. It operates in the two largest cities, Tallinn and Tartu. In total, for the year 2011, the intervener had 21 sales outlets and kiosks with 66 employees and an increase in revenue of 82.79%. Accordingly, in view of the fact that the main activity of the intervener mentioned in its annual reports coincides with the services at issue protected by the earlier mark and taking account of what was stated in paragraph 49 above, about the lack of dating, nor may those photographs be excluded as evidence of the use of the earlier mark for the services at issue.
58      Therefore, contrary to what the applicant alleges, there is evidence in respect of the volume of use of the earlier mark for the services included in Class 43.
59      In conclusion, taken as a whole, the evidence demonstrating the intervener’s continuing commercial activity, the nature of the use of the earlier mark in accordance with its essential function and the volume of that use are capable of proving that the use of the earlier mark is sufficiently significant to amount to an actual and significant commercial effort and is not merely an attempt to imitate genuine use.
60      That finding is not called into question by the applicant’s arguments.
61      First, the applicant submits that no information was provided on the market share held by the mark and the turnover achieved with the goods and services in question in order to show that, in the economic sector concerned, the use of the earlier mark made it possible to maintain or create a market share for the goods or services covered by that mark.
62      In that regard, it must be observed that the above information is only one of the factors which may be taken into account in the examination of the genuine use of an earlier mark. Given that, in that examination, an overall assessment of that use must be carried out which takes account of all the factors relevant to the case, the lack of information on the market share held by the mark and on the turnover achieved with the goods and services in question is not capable of showing, in itself, that the use of the earlier trade mark in the economic sector concerned did not make it possible to maintain or create a market share for the goods or services protected by that mark.
63      Second, as regards the applicant’s reference to the case-law according to which the smaller the commercial volume of the exploitation of the mark, the more necessary it is for the proprietor of the mark to produce additional evidence to dispel possible doubts as to the genuineness of its use, the applicant notes the lack of evidence as to the scope or frequency of the use of the earlier mark or to the turnover or sales achieved by the intervener with that mark.
64      However, as was stated in paragraph 58 above, the intervener provided evidence as regards the volume of use of the earlier mark for the services included in Class 43. In addition, the invoices for the delivery of cups, submitted by the intervener by way of example in respect of a period of three years and substantiated, in particular, by the photos published on the websites of third parties, further show the frequency of the use of the earlier mark. As regards the alleged lack of evidence in respect of turnover or sales, it is appropriate to recall what was considered in paragraph 62 above to the effect that, when examining the genuine use of a mark, an overall assessment of that use must be made taking into account all factors relevant to the case; the information on turnover or sales is only one of those factors.
65      The information provided by the intervener is already sufficient, on its own, to show genuine use of the earlier trade mark during the relevant period.
66      Consequently, the Board of Appeal may not be criticised for having held that, taken as a whole, the annual reports, invoices, photographs of the sales outlets run by the intervener in various places in Estonia, the layout proofs and extracts from third-party websites proved the genuine use of the earlier trade mark in Estonia during the relevant period for services relating to ‘food and drink catering; cafes, bars, bistros, fast food outlets’ falling within Class 43.
67      It follows from the foregoing that the first plea must be rejected.
The second plea in law, infringement of Article 8(1)(b) of Regulation No 207/2009
68      In support of that plea, the applicant submits, first, that the Board of Appeal failed to assess the identity or similarity of the goods in Class 30 on the one hand, and the services included in Classes 35 and 43 on the other. Next, the applicant considers that the Board of Appeal incorrectly determined the level of attention of the relevant public and made an incorrect assessment of the distinctive character of the trade marks relied on by the intervener for the purposes of the opposition. Finally, in its view, the Board of Appeal erred in its assessment of the visual, phonetic and conceptual similarity between the trade marks at issue and, consequently, erroneously concluded that there was a likelihood of confusion between those marks.
69      EUIPO and the intervener dispute the applicant’s arguments.
70      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, an 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)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), ‘earlier trade marks’ means 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 EU trade mark.
71      According to established 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 the goods or services at issue, taking into account all factors relevant to the circumstances of the case, in particular the interdependence of the similarity between the signs and between the goods or services (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverley Hills (GIORGIO BEVERLEY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
72      It is in the light of the foregoing considerations that the Board of Appeal’s assessment of the likelihood of confusion between the signs at issue must be examined.
Comparison of the goods and services
73      The applicant submits that the Board of Appeal did not compare the services in Classes 35 and 43 covered by the trade mark applied for with the goods in Class 30 for which the earlier mark was registered and on the basis of which the opposition was upheld. According to the applicant, that comparison is essential since the degree of similarity between the goods and services has an impact on the need to establish a certain degree of similarity between the marks at issue.
74      EUIPO and the intervener dispute the applicant’s arguments.
75      It should be noted that, in order to uphold the opposition in respect of the services in Classes 35 and 43 covered by the trade mark applied for, it was sufficient for the Board of Appeal to compare those services with those covered by the earlier trade mark in Class 43.
76      Even if the Board of Appeal had compared the services covered by the mark applied for and the goods in Class 30 covered by the earlier mark and had found that those goods and services were not similar, such a finding would have had no effect on the similarity of the services falling within Classes 35 and 43 covered by the trade mark applied for with the services in Class 43 covered by the earlier mark.
77      It must therefore be held that the applicant’s argument concerning the failure to compare the goods falling within Class 30 with the services in Classes 35 and 43 is ineffective.
78      It follows that the Board of Appeal did not err in limiting its examination to the comparison of the services covered by the mark applied for with the services in Class 43 covered by the earlier mark.
The relevant public
79      The applicant submits that the Board of Appeal incorrectly determined the level of attention of the relevant public. It did not assess the relevant public in relation to the category of goods and services in question. The relevant public in the present case is particularly attentive and selective, given its loyalty to a brand. In that regard, referring to a 2011 investigation by The Huffington Post, the applicant alleges that brand loyalty in respect of coffee products and services must be regarded as established.
80      EUIPO contends principally that the applicant’s arguments concerning the level of attention of the relevant public are inadmissible in so far as it did not make any claims in respect of the relevant public either before the Opposition Division or before the Board of Appeal. In the alternative, EUIPO submits that those arguments are unconvincing and unfounded.
81      As regards, first, the admissibility of the applicant’s arguments concerning the level of attention of the relevant public, it must be borne in mind that, admittedly, under Article 188 of the Rules of Procedure of the General Court, the pleadings lodged by the parties in proceedings before the Court may not change the subject matter of the proceedings before the Board of Appeal. Thus, the purpose of an action brought before the Court under Article 65(2) of Regulation No 207/2009 (now Article 72(2) of Regulation 2017/1001) is to review the legality of the decisions of the Boards of Appeal of EUIPO; that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 3 December 2015, TrekStor v OHIM — Scanlab (iDrive), T‑105/14, not published, EU:T:2015:924, paragraph 15 and the case-law cited).
82      However, as the Court of Justice has held (judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 57), by the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact (judgment of 24 May 2011, ancotel v OHIM — Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraph 20).
83      In that regard, it must be held that an opposition to the registration of an EU trade mark, where it is based on Article 8(1)(b) of Regulation No 207/2009, requires EUIPO to adjudicate on whether the marks at issue are identical or similar for the relevant public and the goods and services which they cover (judgments of 18 October 2007, AMS v OHIM — American Medical Systems (AMS Advanced Medical Services), T‑425/03, EU:T:2007:311, paragraph 28, and of 24 May 2011, ancotel., T‑408/09, not published, EU:T:2011:241, paragraph 21).
84      Consequently, the fact that the determination of the relevant public at issue and its level of attention was not challenged by the applicant before the Board of Appeal in no way precludes EUIPO from having jurisdiction over the question whether the relevant public was correctly identified (see, to that effect, judgment of 24 May 2011, ancotel., T‑408/09, not published, EU:T:2011:241, paragraph 22 and the case-law cited).
85      Likewise, therefore, that fact does not deprive a party of the right to challenge, before the Court and within the factual and legal context of the dispute before the Board of Appeal, the findings of that body on that point (see judgment of 24 May 2011, ancotel., T‑408/09, not published, EU:T:2011:241, paragraph 23 and the case-law cited; see also, to that effect, judgment of 1 February 2005, SPAG v OHIM — Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraphs 24 and 25).
86      Accordingly, those arguments must therefore be declared admissible.
87      Next, according to settled case-law, for the purposes of defining the relevant public, it is necessary to take account of consumers likely to use both the goods or services covered by the earlier mark and those covered by the mark applied for (judgment of 30 September 2010, PVS v OHIM — MeDiTA Medizinische Kurierdienst (medidata), T‑270/09, not published, EU:T:2010:419, paragraph 28; see also, to that effect, judgment of 1 July 2008, Apple Computer v OHIM — TKS-Teknosoft (QUARTZ), T‑328/05, not published, EU:T:2008:238, paragraph 23).
88      In the present case, it must be held that the Board of Appeal correctly stated, in paragraphs 32 and 43 of the contested decision, that the two types of services in question, namely the catering (food) services falling within Class 43 and those falling within Class 35, relate to the distribution of food and drink to the general public, and that the degree of attention of the relevant public is average.
89      In that regard, it is sufficient to note that it is apparent from the case-law that coffee in various forms and products related to coffee are everyday food items and that services relating to the sale of coffee are services relating to foodstuffs (see, to that effect, judgments of 17 December 2014, Lidl Stiftung v OHIM (Deluxe), T‑344/14, not published, EU:T:2014:1097, paragraph 20; of 5 July 2016, Future Enterprises v EUIPO — McDonald’s International Property (MACCOFFEE), T‑518/13, EU:T:2016:389, paragraph 33; and of 27 October 2016, Caffè Nero Group v EUIPO (CAFFÈ NERO), T‑37/16, not published, EU:T:2016:634, paragraph 34).
90      Accordingly, the applicant’s argument that the relevant public in the present case is particularly careful and selective in the light of its loyalty to a brand must be rejected.
The comparison of the signs
91      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that 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).
92      It is apparent from the case-law that the assessment of the similarity between two trade 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 judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43). That could, in particular, be the case where that component is capable on its own of dominating the image of that mark which members of the relevant public remember, with the result that all the other components are negligible in the overall impression created by that mark. In addition, the fact that an element is not negligible does not mean that it is dominant, and by the same token the fact that an element is not dominant in no way means that it is negligible (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
93      In the present case, the figurative mark applied for, coffee inn, and the earlier figurative mark, coffee in, are conflicting.
–       Visual comparison of the signs at issue
94      The Board of Appeal held, in paragraphs 35 and 36 of the contested decision, that the word elements of the two signs at issue should be regarded as the dominant elements in the overall impression produced by the two signs. The graphic elements in the sign applied for are only for illustrative purposes, and the square and the ellipse in the earlier mark are elementary geometrical shapes which do not attract the consumer’s attention.
95      The Board of Appeal found, in paragraph 37 of the contested decision, in essence, that the signs at issue were similar in so far as their dominant elements, namely ‘coffee inn’ in the sign applied for and ‘coffee in’ in the earlier mark, coincide in the sequence of letters ‘coffee in’ and differ only in the presence of the additional letter ‘n’ in the sign applied for. As a result of differences in colour and between the graphic elements which are of minor importance in respect of the overall impression, the visual similarity between the signs is average.
96      The applicant takes the view that it is more difficult to find similarities than differences between the signs at issue. The structure and background of the signs are not similar, since the word elements are positioned differently and the font used is also different. The signs at issue can also be distinguished on account of the different figurative elements, one with a stylised drawing of a cup with curves comparable to flames and the other with the word ‘in’ placed in a white oval.
97      EUIPO and the intervener dispute the applicant’s arguments.
98      The Court notes that the signs at issue have the word element ‘coffee in’ in common and that the word element in the sign applied for differs only by the presence of the additional ‘n’. On the other hand, those signs do not have the same graphic structure and do not contain the same figurative elements.
99      In the first place, as regards the word elements of the two signs at issue, their representation, in those signs, does not differ significantly. The word elements are placed identically, with the term ‘coffee’ appearing on the first line and the words ‘in’ or ‘inn’ on the second line. Similarly, all those word elements are represented in lower case letters with a highly similar font and are easily recognisable and legible.
100    It is true that the word elements of the sign applied for are not stylised in a manner identical to those of the earlier mark. The former are represented in black letters without italics, whereas the latter are written in italics and use different colours, namely a white colour for the term ‘coffee’ and a red colour for the word ‘in’. However, in the presence of similarities in the positioning and writing of the word elements of the two signs at issue found in paragraph 99 above, the variations in colour and style of the letters, as in the present case, are of secondary importance in the impression produced by the signs.
101    According to settled case-law, where figurative marks containing word elements are visually compared, the marks are considered to be visually similar if they have in common a significant number of letters in the same position and if the word element of the figurative sign is not highly stylised, notwithstanding the graphic representation of the letters in different type fonts, in italics or bold, in lower case or upper case, or in colour (see, to that effect, judgments of 17 January 2012, Hell Energy Magyarország v OHIM — Hansa Mineralbrunnen (HELL), T‑522/10, not published, EU:T:2012:9, paragraph 50, and of 25 October 2012, riha v OHIM — Lidl Stiftung (VITAL&FIT), T‑552/10, not published, EU:T:2012:576, paragraph 50).
102    Secondly, with regard to the graphic structure of the signs at issue and their figurative elements, the Court finds that the sign applied for consists of an orange rhombus surrounded by a white and black frame, comprising, above the word elements ‘coffee inn’, a figurative element described by the applicant as ‘a stylised cup’. As regards the earlier mark, it is composed of a red square containing a white ellipse with the word element ‘in’ inside.
103    Contrary to what the applicant claims, it must be held that the figurative elements and the graphic structure of the sign applied for, namely the orange rhombus and the stylised cup, do not create a particularly striking graphic design. As the Board of Appeal correctly held, it is the word elements which dominate the overall impression produced by the signs at issue.
104    The geometric shapes used in the two signs at issue are basic, with the result that the Board of Appeal correctly held, in paragraph 36 of the contested decision, that those geometric shapes did not attract the attention of the consumer and were of minor importance with respect to the overall impression. In that regard, it should be recalled that according to the case-law, basic geometric figures include, in addition to basic shapes such as triangles or circles, structures such as ellipses or sickles (judgment of 17 May 2013, Sanofi Pasteur MSD v OHIM — Mundipharma (Representation of two crossing sickles), T‑502/11, not published, EU:T:2013:263, paragraph 58).
105    It should also be noted that the colour combinations in the two signs, namely red and orange, are not likely to dominate the overall impression produced by those signs. Those colours are similar in the eyes of an average consumer who only rarely has the chance to make a direct comparison between the different marks, and who must rely on the imperfect picture of them that he has kept in his mind (see, to that effect, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).
106    As regards the figurative element of the sign applied for, placed immediately above the word ‘coffee inn’ and described by the applicant as ‘a stylised cup’, it cannot be the dominant element of that sign, as claimed by the applicant. That element, notably because of its simple, very summarily stylised form, drawn in non-bold characters and in black and white, does not attract attention and thus does not contribute to the relevant public remembering the sign. Therefore the Board of Appeal did not err in holding that that element was merely for illustrative purposes and that it was of minor importance in relation to the overall impression produced by the sign applied for.
107    Consequently, in the presence, in the two signs at issue, of quasi-identical word elements, identically positioned, written in a highly similar style and being immediately recognisable and easily legible, the figurative elements in those two signs do not prevail over the impression produced by those word elements.
108    In the light of the foregoing, the General Court upholds the finding of the Board of Appeal in paragraph 37 of the contested decision that the visual similarity between the signs at issue is average.
109    That assessment is not called into question by the applicant’s argument that the Board of Appeal, in comparing the signs at issue, did not limit the impact of the word element ‘coffee’, which is weak and devoid of distinctive character, since the word ‘coffee’ is universally understood to refer to the hot drink of the same name.
110    In that regard, suffice it to note that the Board of Appeal compared the word elements ‘coffee inn’ of the sign applied for with those of the earlier ‘coffee in’ mark, and not just one of those elements, namely the term ‘coffee’. In any event, according to case-law, the possibly weak distinctive character of an element of a complex mark does not necessarily imply that that element cannot constitute a dominant element since — because, in particular, of its position in the sign or its size — it may make an impression on consumers and be remembered by them (see judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑34/06, EU:T:2007:387, paragraph 54 and the case-law cited). That is precisely the case here, given the dominant nature of the word elements noted in paragraph 103 above.
–       Phonetic comparison of the signs at issue
111    In paragraph 38 of the contested decision, the Board of Appeal found that the signs were phonetically identical, as the pronunciation of the marks coincided in the expression ‘coffee in’ and no audible difference was produced by the pronunciation of the double letter ‘n’ of the trade mark applied for.
112    The applicant takes the view that, despite an identical or similar pronunciation, the emphasis is nevertheless placed differently. In contrast with the earlier mark, the mark applied for is alleged to have a long sound in the final part thereof because of the double ‘n’, as a result of which the emphasis is placed on the word ‘inn’.
113    EUIPO and the intervener dispute the applicant’s arguments.
114    It must be stated that the applicant does not substantiate its claim that the mark applied for is alleged to have a long sound in the final part thereof because of the double ‘n’, as a result of which the emphasis is placed on the word ‘inn’.
115    Accordingly, since the word elements of the two signs at issue are pronounced in the same way, the Board of Appeal was right to hold that the signs at issue were phonetically identical.
–       Conceptual comparison of the signs at issue
116    At paragraph 39 of the contested decision, the Board of Appeal held that the signs at issue were conceptually similar inasmuch as Estonian consumers would recognise the reference to the English word ‘coffee’ in both word elements, and that the expression ‘coffee in’ has no meaning in English.
117    The applicant disputes the Board of Appeal’s finding on the conceptual comparison of the signs at issue. It submits that the Board of Appeal refused to assess the expression ‘coffee inn’ included in the mark applied for, which has a very clear meaning which is understandable by the relevant public. Moreover, the meaning of the words ‘inn’ and ‘in’ is different and perfectly understood by the relevant public and in fact reflects the different business models used by the applicant and the intervener.
118    EUIPO and the intervener dispute the applicant’s arguments.
119    It should be recalled that it is apparent from the case-law that conceptual differences between two signs can counteract phonetic and visual similarities between them, provided that at least one of those signs has a clear and specific meaning for the relevant public, so that that public is capable of grasping it immediately, and that the other mark has no such meaning or an entirely different meaning (see judgments of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 98 and the case-law cited, and 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 93 and the case-law cited).
120    In the present case, as regards the expressions ‘coffee in’ and ‘coffee inn’, it must be held that the Board of Appeal correctly held that Estonian consumers would recognise the reference to the English word ‘coffee’ in both of those terms. As the Board of Appeal stated, it is common ground that the word ‘coffee’ is universally understood as referring to the drink of the same name.
121    Nonetheless, in the light of the applicant’s arguments, it is necessary to ascertain whether the expressions ‘coffee in’ and ‘coffee inn’, and in particular the difference in meaning between the words ‘in’ and ‘inn’, will be understood by the Estonian public as reflecting the different business models of the applicant and the intervener.
122    In that regard, the applicant submits, first, that the relevant public has a very good knowledge of the English language, as a result of which it ascribes a different meaning to the words ‘in’ and ‘inn’, and on the other hand, that a much greater number of people have a basic knowledge necessarily including the meanings of the words ‘in’ and ‘inn’.
123    Without it being necessary to decide on the level of knowledge of the English language required in order to understand the difference in meaning of the words ‘in’ and ‘inn’ and on the level of knowledge of that language by the relevant public, it must be stated that the meaning of those words in the specific circumstances of the case is not clear and established in English, and therefore not relevant to the relevant public.
124    In the first place, as regards the word ‘in’, the Court finds, as the applicant itself states, that it can be used to express four different situations, namely the situation of an object enclosed in, or surrounded by, another object, a period of time during which an event occurs, a time before an expected future event occurs, or a state or condition. Moreover, the word ‘in’ is a preposition that always requires a context in order for its exact meaning to be understood.
125    In view of the fact that the relevant public may be confronted with the various meanings of the preposition ‘in’, it is far from certain that it is the meaning indicated by the applicant, namely an invitation to enter a place, that the relevant public will bear in mind when reading the words ‘coffee in’. In that regard, it is not excluded that the word ‘in’, when read together with the term ‘coffee’, may also be understood as referring to coffee which is poured into a cup or which will be ready within a period of time (for example, ‘coffee in 5 minutes’). It is also possible that the relevant public may perceive the combination of the word elements ‘coffee’ and ‘in’ as a reference to the term ‘caffeine’, a crystalline alkaloid which is found especially in tea and coffee plants and is a central nervous system stimulant (according to the Oxford English Dictionary). The words ‘coffee’ and ‘in’, read together literally, closely resemble the Estonian word ‘kofeiin’.
126    As for the word ‘inn’, it is clear from the Oxford English Dictionary that it has two meanings, one designating a pub, offering accommodation in some cases, and the other a lodging offering accommodation, food and drink. Thus, the whole formed by the word elements ‘coffee inn’ could literally be understood in English as ‘a coffee pub’ or ‘a coffee inn’.
127    Nevertheless, it must be recognised that, conceptually, there is no such thing as a ‘coffee pub’, as that type of establishment is normally called a café, pub or restaurant. The same is true of ‘a coffee inn’ which is commonly referred to as an inn or hotel.
128    Consequently, since the term ‘coffee inn’ does not refer to a clear and established concept in English, it is not certain that the relevant public will perceive these words as a reference to a restaurant in which to relax, as claimed by the applicant. They may also be understood by the relevant public as resembling, in particular when read together literally, the Estonian term for caffeine, namely ‘kofeiin’.
129    Admittedly, according to the Oxford English Dictionary, the meanings of the words ‘in’ and ‘inn’ are clearly different. However, in view of the existence of several meanings of the word ‘in’, found in paragraph 124 above, the relevant public will not be able to see, merely by comparing those words, the conceptual difference between the business models allegedly used by the applicant and the intervener.
130    In the light of the foregoing, since the word elements ‘coffee in’ and ‘coffee inn’ do not have a clear and established meaning either in English or for the relevant public in general, with the result that that public is not likely to grasp it immediately irrespective of its knowledge of English, the Board of Appeal did not err in holding that the signs were conceptually similar inasmuch as Estonian consumers would recognise the reference to the English word ‘coffee’ in both word elements.
–       Global assessment of the likelihood of confusion
131    The Board of Appeal held, in paragraph 44 of the contested decision, that there was a likelihood of confusion between the signs at issue, given the identity and similarity of the services at issue, the average visual and conceptual similarity, the high degree of phonetic similarity and the average degree of distinctiveness of the earlier mark.
132    The applicant submits that the Board of Appeal erred in finding that there was a likelihood of confusion between the signs at issue. First, the Board of Appeal incorrectly held that the word elements of the marks at issue were weak and non-distinctive, in particular in view of the differences in the geometric shapes and colours. Secondly, the Board of Appeal incorrectly determined the level of attention of the relevant public. Thirdly, the applicant claims that, given the nature of the services at issue, the phonetic identity between the signs at issue is of minor importance in assessing the likelihood of confusion, and that it is the visual perception of the signs at issue and the identification of the conceptual content which will generally occur before the time of the purchase or order. Finally, in order to substantiate its claims on the perception of the signs at issue in the mind of the average consumer of the services at issue, the applicant provides an opinion poll carried out in Lithuania and Estonia.
133    EUIPO and the intervener dispute the applicant’s arguments.
134    In the present case, as has already been held in paragraph 88 above, the Board of Appeal correctly held that the services in question concerned the distribution of food and drink to the general public and that, therefore, the degree of attention of the relevant public was average. Next, it is apparent from paragraphs 103 and 107 above that the Board of Appeal did not err in deciding that the word elements dominated the overall impression produced by the signs at issue, and that the figurative elements in the two signs did not prevail over the impression produced by those word elements. Finally, it was held in paragraphs 108, 115 and 130 above that the Board of Appeal did not err in its visual, phonetic and conceptual comparison of the signs at issue.
135    Given the identity or similarity of the services covered by the signs at issue, the identity of a very significant number of letters in the same position in the word elements of the two signs and the dominant character and phonetic identity of those word elements, it must be held that there is a likelihood of confusion in the minds of the members of the relevant public.
136    That assessment is not called into question by the applicant’s arguments.
137    First, as regards the argument that the phonetic identity between the marks is of minor importance in assessing the likelihood of confusion, the applicant submits that customers do not order a ‘coffee in’ or ‘coffee inn’, but rather a specific product, such as an espresso, a cappuccino, or a latté.
138    However, it must be stated, as EUIPO has done, that the Board of Appeal in the present case concluded that there was a likelihood of confusion for services but not for goods. It should be noted that it is the presentation of the goods on shelves that enables the consumer to carry out a visual examination first. On the other hand, in respect of the catering services covered by the signs at issue, the visual aspect plays a secondary role. In order to choose a restaurant or a café, a consumer usually refers to its name, not its visual aspect. Even though it cannot be excluded that that choice may be made by reference to the visual characteristics of the name of a restaurant or café, that method of choosing cannot be considered to be the usual method by which to make such a choice.
139    Furthermore, the Board of Appeal correctly pointed out that the similarities between the signs at issue also prevailed in the visual aspect, since the dominant element ‘coffee in’ of the earlier mark was reproduced identically in the dominant element ‘coffee inn’ of the sign applied for.
140    Moreover, the applicant’s argument that it is difficult to conceive that consumers could imagine that the two marks originate from the same undertaking or from economically linked undertakings must also be rejected. In that regard, the applicant relies on the different graphic representations of those marks and on the different types of undertakings involved. In addition, in order to substantiate the perception of the differences between the marks in Lithuania and Estonia, the applicant produced the results of an opinion poll according to which the majority of the respondents did not believe that the sign applied for and the earlier mark were similar.
141    In view of the dominant character of the word elements in the two marks and the fact that the figurative elements present in the two signs do not prevail over the impression produced by those word elements, noted respectively in paragraphs 103 and 107 above, the consumer will remember those word elements rather than the other aspects.
142    Consequently, given that the almost identical word elements in the two marks at issue may play the primary role in the process of the relevant public remembering those marks, they are likely to be perceived by the consumer as the sign indicating the commercial origin of these products.
143    Neither the results of the opinion poll produced by the applicant, assuming it is deemed admissible, nor the alleged existence of the two different types of business models call that conclusion into question.
144    As regards the results of the opinion poll, it is apparent from paragraph 77 of the application that, in the course of that poll, the two marks at issue were presented simultaneously to the respondents, with the result that they could compare them side by side. However, it should be recalled that the average consumer only rarely has the chance to make a direct comparison between the different marks, and that he must rely on the imperfect picture of them that he has kept in his mind (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).
145    With regard to the applicant’s argument that it and the intervener use different business models and therefore target distinct customers, it should be noted that that argument relates to the actual nature of the services offered under their respective brands. That argument is irrelevant, since only the description they gave of those services, respectively, in the EU trade mark application and in the opposition, matter (see, to that effect, judgment of 11 June 2014, Golam v OHIM — Glaxo Group (METABIOMAX), T‑62/13, not published, EU:T:2014:436, point 41).
146    In the light of all of the foregoing, the second plea must be rejected as unfounded and, accordingly, the present action dismissed in its entirety, without it being necessary to rule on the applicant’s application to dismiss the opposition and to allow the registration of the mark applied for, or on the intervener’s application to confirm the contested decision.
Costs
147    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. 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.
On those grounds,
THE GENERAL COURT (Fourth Chamber),
hereby:
1.      Dismisses the appeal;
2.      Orders UAB Keturi kambariai to pay the costs.
Kanninen
Calvo-Sotelo Ibáñez-Martín
Reine
Delivered in open court in Luxembourg on 24 October 2017.
E. Coulon
H. Kanninen
Registrar
President
*      Language of the case: English.