JUDGMENT OF THE GENERAL COURT (First Chamber)
30 April 2025 (*)
( EU trade mark – Opposition proceedings – Application for the EU figurative mark THE VERT DE CHINE 4011 ALJAMAL ALJAMAL 4011 B 552 – Earlier EU figurative marks 4011 B 552 and 4011 B 552 TE VERDE DI CINA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 )
In Case T‑95/24,
Laura Food Srl, established in Milan (Italy), represented by C. Bercial Arias, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Morghati Abderrahim, Ditta Individuale, established in Milan (Italy), represented by C. Primiero, lawyer,
THE GENERAL COURT (First Chamber),
composed of R. Mastroianni (Rapporteur), President, M. Brkan and I. Gâlea, Judges,
Registrar: J. Čuboň, Administrator,
having regard to the written part of the procedure,
further to the hearing on 28 January 2025,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Laura Food Srl, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 December 2023 (Case R 909/2023‑2) (‘the contested decision’).
Background to the dispute
2        On 14 February 2017, the applicant filed with EUIPO an application for registration of an EU trade mark in respect of the following figurative sign:
3        The mark applied for covered goods in, inter alia, following the restriction made in the course of proceedings before EUIPO, 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, corresponding to the following description: ‘Tea’.
4        On 23 June 2017, the intervener, Morghati Abderrahim, Ditta Individuale, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5        The opposition was based on the following earlier EU figurative marks:
–        the EU figurative mark, reproduced below, registered on 19 March 2014, under No 12247623 (‘earlier mark No 1’), in respect of the following goods in Class 30: ‘Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice’:
–        the EU figurative mark, reproduced below, registered on 1 August 2019, under No 15722275 (‘earlier mark No 2’), in respect of goods in, inter alia, Class 30 corresponding to the following description: ‘Coffee, teas and cocoa and substitutes therefor’:
6        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of 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).
7        On 5 April 2023, the Opposition Division partially upheld the opposition on the ground that there was a likelihood of confusion, on the basis of Article 8(1)(b) of Regulation 2017/1001, in respect of some of the goods concerned in Classes 29 and 32 and in respect of all the goods in Class 30.
8        On 28 April 2023, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9        By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was a likelihood of confusion between the marks at issue. First of all, it found that the goods in question were identical, that the relevant territory was that of the European Union and that the goods in question targeted the general public whose level of attention was, at most, average. Next, it acknowledged that the relevant public could be separated into two parts, taking the view that a non-negligible part of that public would perceive, in the context of tea, the number ‘4011’ and the alphanumeric element ‘b 552’ of the signs at issue as descriptive indications of the quality of tea, but that, however, a substantial part of that public would perceive those elements only as the letter and numbers that they identify. It concluded that those elements were dominant in the earlier marks and co-dominant, with the word element ‘aljamal’, in the mark applied for, and that the inherent distinctive character of the earlier marks was normal, at least for the part of the public in question which did not consist of tea traders, experts or enthusiasts. Furthermore, it found that those signs were visually and conceptually similar to a below-average degree and that they were phonetically at least similar.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and, as the case may be, the intervener, to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that an oral hearing is convened.
12      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Admissibility of the documents submitted for the first time before the Court and of the document submitted at the hearing
13      In the first place, the applicant submitted in Annex A.7 to the application extracts from the website of the mark MARIAGE FRÈRES seeking to demonstrate that the level of attention of the relevant public was average and not, at most average as the Board of Appeal found. In addition, in paragraph 50 of the application, it referred to the website address ‘https://www.mariage-freres.com/FR/1-grands_crus-the_pu_erh.html’.
14      In the second place, before the beginning of the hearing, the applicant submitted a new document consisting of a photograph depicting nine boxes of tea on which certain word and figurative elements of the marks at issue are legible, including the numeric and alphanumeric elements ‘4011’ and ‘b 552’.
15      EUIPO contends that the evidence produced in Annex A.7 to the application and the reference to a website address made in paragraph 50 of the application constitute new evidence and a new reference, which were not previously submitted in the proceedings before the Board of Appeal, and are, therefore, inadmissible.
16      As regards the photograph produced before the beginning of the hearing, EUIPO contended at that hearing that it was inadmissible.
17      According to settled case-law, the purpose of actions before the General Court under Article 72(2) of Regulation 2017/1001 is to obtain a review of the legality of decisions of the Board of Appeal, which must be carried out, pursuant to Article 95 of that regulation, in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the General Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).
18      Therefore, it is not the Court’s function to review the facts in the light of evidence adduced for the first time before it. To allow such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ submissions may not alter the subject matter of the proceedings before the Board of Appeal. Accordingly, the evidence submitted for the first time before the Court must be declared inadmissible and there is no need to examine it (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
19      In the present case, in the first place, it must be stated that the documents included in Annex A.7 to the application and the reference to a website address made in paragraph 50 of the application were produced for the first time before the Court. Therefore, in accordance with the case-law cited in paragraph 18 above, they must be rejected as inadmissible.
20      In the second place, as regards the photograph produced before the beginning of the hearing, it should be noted that the document submitted was not examined by the Board of Appeal for the purpose of adopting the contested decision and must, in accordance with the case-law cited in paragraph 18 above, be rejected as inadmissible. In addition and in any event, even if that document does not constitute a new plea in relation to the pre-litigation procedure, it should be rejected as inadmissible, since, under Article 85(3) of the Rules of Procedure, ‘the main parties may … produce or offer further evidence before the oral part of the procedure is closed or before the decision of the General Court to rule without an oral part of the procedure, provided that the delay in the submission of such evidence is justified’ and, in the present case, the applicant has not provided any convincing explanation as to why that evidence was not lodged previously (see, to that effect, judgment of 20 September 2023, Breville v EUIPO (Cooking devices), T‑616/22, not published, EU:T:2023:576, paragraph 25).
Substance
21      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It complains that the Board of Appeal made a series of errors in the assessment of the facts of the case and of the likelihood of confusion which would result from registration of the mark applied for. The alleged errors concern the distinctive character of the elements ‘4011’ and ‘b 552’ appearing in the marks at issue and the similarity between the signs at issue.
22      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, 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.
23      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. 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 or services covered (see judgment 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).
24      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, 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).
25      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment 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 76 and the case-law cited).
26      It is in the light of all of the foregoing that it is necessary to examine whether, as the applicant submits, the Board of Appeal erred in taking the view that there was a likelihood of confusion in accordance with Article 8(1)(b) of Regulation 2017/1001.
The relevant public and territory
27      The Board of Appeal found that the relevant territory was that of the European Union and that the goods in question targeted the general public whose level of attention was, at most, average.
28      The applicant, relying on Annex A.7 to the application and referring to the website address ‘https://www.mariage-freres.com/FR/1-grands_crus-the_pu_erh.html’, submits that the level of attention of the relevant public is not at most average, as the Board of Appeal found, but average, in so far as consumers are attentive when choosing the goods in question, for reasons relating to the prices of the goods and the protection of consumers’ health.
29      EUIPO and the intervener dispute the applicant’s arguments.
30      In that regard, it must be borne in mind that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
31      Moreover, according to settled case-law, it must be found that, since the goods in Class 30, which are similar or identical to those covered by the marks at issue, are mostly inexpensive foodstuffs intended for mass consumption, the attention level of the public concerned is expected to be average at most, or even low (see, to that effect, judgments of 7 October 2015, Panrico v OHIM – HDN Development (Krispy Kreme DOUGHNUTS), T‑534/13, not published, EU:T:2015:751, paragraph 32; of 13 September 2016, Perfetti Van Melle Benelux v EUIPO – PepsiCo (3D), T‑390/15, not published, EU:T:2016:463, paragraphs 39 and 40; and of 7 February 2018, Krasnyiy oktyabr v EUIPO – Kondyterska korporatsiia “Roshen” (CRABS), T‑795/16, not published, EU:T:2018:73, paragraph 21).
32      In the present case, since the goods in question are mostly inexpensive foodstuffs intended for mass consumption, it must be found that the relevant public consists of consumers in the European Union with a level of attention which was, at most average. The applicant’s arguments cannot call into question that assessment. First of all, the documents included in Annex A.7 to the application, the reference to a website made in paragraph 50 of the application and the photograph submitted before the beginning of the hearing cannot be taken into consideration (see paragraphs 17 to 20 above). Next, the fact that some types of tea may be expensive does not alter the fact that tea mostly remains an inexpensive foodstuff intended for mass consumption. Lastly, the applicant in no way substantiates its claim that the level of attention of the relevant consumers is average, in particular, on account of the impact which the purchase of those goods would have on their health.
33      Therefore, the Board of Appeal’s assessment referred to in paragraph 30 above is free from error.
The comparison of the goods
34      In paragraph 24 of the contested decision, the Board of Appeal noted that the goods in question were identical. That assessment is not disputed by the applicant.
The comparison of the signs
35      It should be borne in mind that the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs, 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).
36      Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see 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 (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
37      Before assessing the visual, phonetic and conceptual similarity of the signs at issue, it is necessary to examine the Board of Appeal’s assessment of their distinctive and dominant elements.
–       The distinctive and dominant elements of the signs at issue
38      According to the case-law, for the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 26 November 2015, Bionecs v OHIM – Fidia farmaceutici (BIONECS), T‑262/14, not published, EU:T:2015:888, paragraph 38 and the case-law cited).
39      In order to assess whether one or more given components of a complex trade mark is dominant, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (see judgment of 8 February 2007, Quelle v OHIM – Nars Cosmetics (NARS), T‑88/05, not published, EU:T:2007:45, paragraph 58 and the case-law cited).
40      It is in the light of those considerations that it must be assessed whether there are any distinctive and dominant elements in the signs at issue.
41      In the present case, in the contested decision, the Board of Appeal observed that the mark applied for consisted, first of all, of a yellow background that resembles a piece of wood. Next, in the left part of the sign, two dromedaries are depicted, one of which is smaller than the other, the word elements ‘thé vert de chine’ and ‘chaara 4011’, in small letters, and elements in Arabic, to the right of the larger dromedary, the word element ‘original’ in a small circle as well as the word element ‘aljamal’ written in red. Lastly, the Board of Appeal notes that the right side of the sign contains the ‘large letter [and] number combination “4011 B 552”’ which appears inside a large red oval placed at the centre, the word element ‘atay ifoulki’ and the word element ‘aljamal’ written in red.
42      First, according to the Board of Appeal, the expression ‘thé vert de chine’ making up the mark applied for is an expression understood by the French- and Italian-speaking parts of the relevant public as a descriptive indication of the product in question. That is also the case in relation to the Spanish-speaking part of that public, which might understand those terms on account of their resemblance to the equivalent words in Spanish. Therefore, for those parts of that public, those word elements would be devoid of distinctive character in relation to the product in question, namely tea, in Class 30. Moreover, that Board of Appeal found that, even if consumers outside France, Italy and Spain could also grasp the meaning of that expression, the fact remained that a part of that public would not understand that meaning. Second, as regards the word element ‘chaara’ making up that mark, it found that, for part of the public in question, the term ‘chaara’ had no meaning in relation to the goods in question, whereas for another part of such a public, who systematically consume green tea, are tea enthusiasts or are professionals in the sector concerned, that term is descriptive of tea, given that it refers to a specific type of tea leaves. Third, in endorsing the Opposition Division’s finding, it took the view that the word elements in Arabic script were of secondary importance in relation to the other elements of the marks at issue in that they were unintelligible for the majority of consumers in the European Union. Fourth, as regards the background of that mark, it found that it resembled a wooden surface which would be perceived merely as a decorative element. Fifth, it found that the depictions of dromedaries or camels in that mark had distinctive character since no link could be made between those animals and tea. Sixth, as regards the word elements ‘aljamal’ and ‘atay ifoulki’, it found that they had no meaning for the relevant public and that they were, therefore, distinctive.
43      Seventh, the Board of Appeal found that, even if a non-negligible part of the relevant public perceived the number ‘4011’ and the alphanumeric element ‘b 552’ of the signs at issue as descriptive indications of the quality of tea, the fact remained that a substantial part of that public would perceive those elements as the letter or numbers that they identify. Furthermore, it took the view that the evidence produced by the applicant in the opposition proceedings was not, in essence, sufficient to demonstrate that the elements ‘4011’ and ‘b 552’ of those signs were descriptive of the goods in question. Lastly, although it acknowledges that a non-negligible part of that public will perceive those elements as descriptive indications of the quality of tea, it found that a substantial part of that public would perceive those elements only as the letter and numbers that they identify.
44      The applicant submits that the elements ‘4011’ and ‘b 552’ common to the signs at issue are descriptive of the goods in question.
45      In particular, first of all, the applicant claims that the element ‘4011’ of the signs at issue refers to a grade of green tea from China or to a type of tea. In order to support that finding, it relies, first of all, on earlier decisions of EUIPO and on evidence which it had produced before the Board of Appeal and which it reproduces in Annex 6 to the application, namely the results of a search on the Google website on the term ‘4011 tea’, an extract from the Wikipedia website on Chun Mee tea, a statement by a tea exporter confirming that the element ‘4011’ is the standard reference for Chun Mee tea, which is a type of Chinese green tea, a list of marks containing the descriptive indication ‘4011’ registered in the countries of the European Union and the results of an image search listed on the Google website concerning the expression ‘4011 tea’. It adds that, even though it follows from EUIPO’s earlier decisions on which it relied that the descriptive character of the element ‘b 552’ had not been sufficiently proven, the fact remains that that element plays a major role in the overall assessment and does not justify the finding that there is a likelihood of confusion.
46      Next, the applicant disputes the fact that the Board of Appeal found that the burden of proof, demonstrating that average consumers belonging to the general public had been exposed to widespread use of similar trade signs in connection with tea and had become accustomed to those indications, lay with the applicant, inasmuch as it had already demonstrated that the element ‘4011’ was descriptive of a particular type of tea.
47      Lastly, the applicant claims that, as regards ‘tea’ the numbers that may appear in marks are generally regarded as codes, lines and ranges, as described on the Valley Green Tea website.
48      EUIPO and the intervener dispute the applicant’s arguments.
49      It should be borne in mind that, as has been pointed out in paragraph 45 above, the Board of Appeal found that although, on the one hand, a non-negligible part of the relevant public perceived the number ‘4011’ and the alphanumeric element ‘b 552’ of the signs at issue as descriptive indications of the quality of tea, the fact remains that, on the other hand, a substantial part of that public would perceive those elements only as the letter and numbers that they identify.
50      The applicant fails to call into question those findings of the Board of Appeal.
51      In the first place, the applicant relies on a number of decisions of the Cancellation Division which were taken prior to the contested decision in order to demonstrate that the elements common to the signs at issue are descriptive of the goods in question.
52      As a preliminary point, it should be borne in mind that the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice of EUIPO or a previous national decision-making practice (see, to that effect, judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 31 January 2019, DeepMind Technologies v EUIPO (STREAMS), T‑97/18, not published, EU:T:2019:43, paragraph 53 and the case-law cited).
53      Moreover, although, in the light of the principles of equal treatment and sound administration, EUIPO must take into account the decisions already taken and consider with especial care whether it should decide in the same way or not, compliance with the principle of legality requires that the examination of any trade mark application be stringent and comprehensive and be undertaken in each individual case, since registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73, 74 and 77, and order of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 37 and the case-law cited).
54      In any event, first, as regards the decision of the Cancellation Division of 1 March 2021 (Case No C 40 499), annulling a word mark consisting exclusively of the element ‘4011’ on account of its descriptive character, on the basis of the absolute grounds for refusal laid down in Article 7(1)(b) and (c) of Regulation 2017/1001, it must be noted, as the Board of Appeal did, that the decision in question was based on the fact that part of the relevant public, namely importers, enthusiasts and consumers who often purchase or consume tea, could understand the element ‘4011’ as being a description of the goods in question. The fact remains that, in that same decision, the Cancellation Division of EUIPO found that part of that public would not perceive the element in question as being descriptive of those goods. In the assessment of whether there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 and according to the case-law cited in paragraph 26 above, it is sufficient that a relative ground for refusal exists in part of the European Union for an EU trade mark to be refused registration. Therefore, as has been observed by that Board of Appeal, the Cancellation Division’s decision cannot demonstrate that, in the present case, consumers in the European Union will all perceive the element ‘4011’ of the signs at issue as being descriptive of the goods in question.
55      Second, as regards the decisions of the Cancellation Division of 1 March 2021 (Case No C 40 680), concerning earlier mark No 1 and of 19 April 2021 (Case No C 40 661), concerning earlier mark No 2, it must be noted, as the Board of Appeal did, that the evidence which the applicant produced in the application for a declaration of invalidity of those decisions did not contain sufficient references to the alphanumeric element ‘b 552’ and therefore do not make it possible to call into question the finding that a substantial part of the relevant public would perceive that element only as the letter and numbers that they identify.
56      Third, concerning the decision of the First Board of Appeal of 31 January 2019 (Case R 633/2018‑1), it should be stated that the fact that that Board of Appeal accepted that the elements ‘4011’ and ‘b 552’ were descriptive of tea cannot call into question the Board of Appeal’s finding in the present case that a substantial part of the relevant public would perceive those elements only as the letter and numbers that they identify.
57      Fourth, in respect of the Opposition Division’s decision of 9 August 2017 (Case No B 2 768 292), which was produced in Annex 6.3 to the application, the Opposition Division found that the element ‘4011’ was descriptive of a characteristic of tea, but without specifying in respect of which part of the relevant public and without having demonstrated that consumers in the European Union who often purchase or consume tea could understand the element ‘4011’ as being a description of the goods in question.
58      In the second place, the applicant adduced a certain amount of documentary evidence, produced in Annex 6.2 to the application, in support of its claim that the element ‘4011’ of the signs at issue is descriptive (see paragraph 47 above). However, it should be noted that the applicant merely listed the evidence which it had produced during the pre-litigation procedure without repeating its arguments. In any event, it is necessary to uphold the Board of Appeal’s assessment that the applicant has not succeeded in demonstrating that the elements ‘4011’ and ‘b 552’ were commonly recognised by consumers in the European Union as being descriptive of the goods in question. As the Board of Appeal correctly found, it cannot be ruled out that a non-negligible part, without, however, being substantial, of the relevant public, namely the part consisting of tea traders, experts or enthusiasts, will perceive, in the context of tea, those elements as descriptive indications of the quality of tea, but that, however, the remaining, more substantial, part of that public will perceive those elements only as the letter and numbers that they identify.
59      As regards the applicant’s argument relating to the burden of proof, it should be noted that the Board of Appeal’s finding that the burden of proof lay with the applicant, is consistent with the general rules on the burden of proof, pursuant to which it is for the person who is relying on a right to adduce evidence that he or she is the proprietor of that right (see order of 5 December 2007, Kapman v OHIM (Representation of a saw blade in blue), T‑127/06, not published, EU:T:2007:366, paragraph 35). Registration of a mark applied for depends, inter alia, on the descriptive character of the elements in common between the mark applied for and the earlier mark. It is therefore for the applicant to prove, inter alia, that those elements are descriptive. In the present case, the applicant has failed to call into question the Board of Appeal’s finding that a substantial part of the relevant public would perceive the elements ‘4011’ and ‘b 552’ only as the letter and numbers that they identify. The applicant has therefore failed to discharge its burden of proof in that regard.
60      In respect of the other elements of the mark applied for, namely ‘thé vert de chine’, ‘chaara’, ‘original’, ‘atay ifoulki’, the word elements written in Arabic and the figurative elements, it should be noted that they are not of great importance in the overall impression conveyed by that mark. It must be held, as the Board of Appeal found, that the word element ‘thé vert de chine’ cannot be given much weight in the overall impression conveyed by that mark, given its position, its size and the fact that part of the relevant public will perceive that element as being descriptive of the goods in question. In addition, as has been observed by that Board of Appeal, the element ‘chaara’ has no particular meaning in relation to those goods for part of the relevant public, with the exception of consumers in the European Union who systematically consume green tea, are tea enthusiasts or professionals in the field, for whom the term ‘chaara’ is merely descriptive of tea, as it refers to a specific type of tea leaves (see judgment of 10 July 2024, Laura Food v EUIPO – Bella Tawziaa II (Thé Vert de Chine AL ASSAD HBOUB R3505 Chaara 4011), T‑541/23, not published, EU:T:2024:457, paragraph 56). As regards the word element ‘atay ifoulki’, notwithstanding its distinctive character, its position and its size in the mark at issue is not capable of giving it an importance in the overall impression. Concerning the Arabic word elements and the figurative elements of that mark, they will be perceived as mere decorative elements.
61      Lastly, it must also be stated that, within the mark applied for, the elements ‘4011’ and ‘b 552’ are larger than the other elements, are written in bold capital letters and are surrounded by a red oval, which makes them immediately perceptible in relation to those other elements.
62      Consequently, it must be observed that the Board of Appeal was right in finding that the elements ‘aljamal’, ‘4011’ and ‘b 552’ of the mark applied for were distinctive and co-dominant in the overall impression created by that mark.
63      Furthermore, as regards the distinctive and dominant elements of the earlier marks, it must be held that the Board of Appeal was right in finding that they were the elements ‘4011’ and ‘b 552’. As that Board of Appeal noted, first, those elements have no meaning for the majority of the relevant public and produce a certain impression in the overall perception of those marks, and, second, the other elements of those marks, namely the background resembling a wooden surface, the metallic decorative elements and the descriptive element ‘peso neto 250 gr’ (earlier mark No 1), the square or oval frame in red, the word element ‘chaara’, the Arabic letters and the descriptive element ‘peso netto 200 gr’ (earlier mark No 2), are of secondary importance on account of their smaller size and position, which is not disputed by the parties.
–       The visual similarity
64      The Board of Appeal found that the signs at issue coincided in their common elements ‘4011’ and ‘b 552’, written in a rather standard font, which were the most dominant of the earlier marks and co-dominant with the element ‘aljamal’ in the mark applied for. Moreover, it found that those signs had in common a background in differing yellow tones that resembles wood and decorative details. Although the mark applied for includes other word or figurative elements, it took the view that those elements were not sufficient to rule out a similarity between those signs resulting from their common distinctive and eye-catching elements. It concluded that the signs at issue were visually similar to a below-average degree.
65      The applicant claims that the signs at issue are visually significantly different creating a completely different overall impression on the part of the relevant public. According to the applicant, first, the distinctive and dominant element of the mark applied for is ‘aljamal’ and that element has no counterpart in the earlier marks. Second, it states that the mark applied for contains the word elements ‘chaara’ and ‘atay ifoulki’ followed by Arabic words and the figurative element depicting two dromedaries of different sizes which are not present in the earlier marks. Lastly, it submits that those marks are composed of descriptive terms and very banal and commonplace figurative elements in the tea sector, with the result that the signs at issue are visually different.
66      EUIPO and the intervener dispute the applicant’s arguments.
67      First of all, as has been stated in paragraphs 51 to 65 above, the elements ‘4011’ and ‘b 552’, common to the signs at issue, which are present in those signs in different positions and sizes, are not descriptive for a significant part of consumers in the European Union and have distinctive character, are dominant or co-dominant in those signs.
68      Next, the signs at issue have other, less important elements in common, namely a background in differing yellow tones that resembles wood and decorative details. Lastly, they display differences on account of the presence within the mark applied for of other figurative and word elements as well as the co-dominant element ‘aljamal’ which do not, however, make it possible, as the Board of Appeal correctly found, to establish a lack of visual similarity between them.
69      According to the case-law, where the dominant element of the earlier mark is included in its entirety in the mark applied for, as in the present case, there is some visual similarity between the signs at issue (see, to that effect, judgment of 19 April 2016, 100% Capri Italia v EUIPO – IN.PRO.DI (100% Capri), T‑198/14, not published, EU:T:2016:222, paragraph 99).
70      In the light of the foregoing, the Board of Appeal did not make an error of assessment in finding that the signs at issue were visually similar to a below-average degree.
–       The phonetic similarity
71      The Board of Appeal found that consumers tend to refer only to the dominant elements of marks and to shorten marks containing several words. It concluded, as regards the earlier marks, that consumers would pronounce the letter and numbers of their dominant elements and, as regards the mark applied for, that they would pronounce the term ‘aljamal’, the letter and numbers of its dominant elements. In addition, it found that the other word elements present in the mark applied for were written in a smaller font and would not be pronounced. It therefore found that the signs at issue are phonetically at least similar.
72      The applicant submits that the signs at issue are phonetically very different. According to the applicant, consumers in the European Union refer to the mark applied for using only the term ‘aljamal’, which is the most dominant and distinctive element and not the elements ‘4011’ and ‘b 552’ since they are descriptive of the goods at issue. As regards the earlier marks, it claims that they have no distinctive elements to which that public may refer and will be designated by the term ‘chaara’ or by the other numerical elements.
73      EUIPO and the intervener dispute the applicant’s arguments.
74      It should be borne in mind that, according to the case-law, in the strict sense, the phonetic reproduction of a composite trade mark corresponds to that of all its word elements, regardless of their specific graphic features, which fall within the analysis of the sign on a visual level. Therefore, for the purposes of the phonetic comparison, it is not necessary to take the figurative elements of the earlier marks into account, which will not be pronounced by the relevant public (see, to that effect, judgment of 15 February 2023, Topcart v EUIPO – Carl International (TC CARL), T‑8/22, not published, EU:T:2023:70, paragraph 72 and the case-law cited).
75      In the present case, as has been stated in paragraphs 51 to 65 above, the elements ‘4011’ and ‘b 552’ are dominant in the earlier marks and the distinctive character of those marks must be regarded, as the Board of Appeal found, as being normal. In the mark applied for, those elements are co-dominant with the word element ‘aljamal’ and the element ‘thé vert de chine’ is perceived by the relevant public as a description of the goods in question and is, therefore, devoid of distinctive character. Thus, that Board of Appeal was right to find that, first, the mark applied for will be pronounced ‘aljamal 4011 b 552’ and that, second, the earlier marks will be pronounced ‘4011 b 552’. Therefore, that Board of Appeal was right to find that the signs at issue were phonetically at least similar.
–       The conceptual similarity
76      The Board of Appeal found that the signs at issue were conceptually similar to a below-average degree because they coincided in the alphanumeric elements ‘4011’ and ‘b 552’. It also stated that, although their background and the elements which resembled metallic details are of secondary importance, given that they would be perceived as merely decorative, those signs had in common the concept of the wooden surface of a crate, while, however, differing in the concept of the dromedaries present in the mark applied for.
77      The applicant claims, first of all, that the elements ‘4011’ and ‘b 552’ common to the signs at issue are descriptive of a particular type of tea and, even though it cannot be proved that their meaning will be understood by all consumers in the European Union, the fact remains that they are descriptive elements and that they must therefore be given less importance when comparing those signs. Next, it submits that, conceptually, either those signs cannot be compared, since the element ‘aljamal’ of the mark applied for is not understood by the relevant public, or they can be compared, but will be regarded as being different on account of the graphic representation of the two dromedaries in that mark, given that there is no link between those animals and tea.
78      EUIPO and the intervener dispute the applicant’s arguments.
79      In the present case, first of all, the Board of Appeal correctly found that the signs at issue coincided in the concept of the wooden surface of a crate, while acknowledging that that latter element was of secondary importance.
80      Next, it must be noted that the signs at issue differ in the presence of the word element ‘aljamal’ in the mark applied for, which does not convey any concept, not making it possible, as the applicant acknowledged in paragraph 38 of the application, to take it into account in the conceptual comparison of those signs. It must also be stated that the Board of Appeal acknowledged that the graphic representation of the two dromedaries in the mark applied for had distinctive character and found, therefore, that those signs presented a conceptual difference in that regard.
81      In the light of all of the foregoing and even though it is true that the alphanumeric elements ‘4011’ and ‘b 552’ have no meaning, at least for the significant part of the relevant public on which the Board of Appeal based its assessment, the fact remains that, in so far as the signs at issue share the concept of the wooden surface of a crate, the representation of the dromedaries only in the mark applied for does not, in itself, lead to the conclusion that there is a conceptual difference between the signs at issue. Consequently, it must be held, as the Board of Appeal found, that those signs are conceptually similar to a below-average degree.
The global assessment of the likelihood of confusion
82      The applicant disputes that there is a likelihood of confusion on the part of the relevant public. It contests the Board of Appeal’s overall assessment of the similarity of the signs, repeating the arguments raised to challenge their visual, phonetic and conceptual similarities.
83      EUIPO and the intervener dispute the applicant’s arguments.
84      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).
85      Moreover, according to the case-law of the Court, the extent of the similarity or difference between the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by the opposing signs are marketed. If the goods covered by the marks in question are usually sold in self-service stores where consumers choose the product themselves and must therefore rely primarily on the image of the trade mark applied to the product, the visual similarity between the signs will, as a general rule, be more important (see judgment of 13 December 2007, Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 80 and the case-law cited).
86      In the present case, in the first place, it should be noted that, first, the goods in question are identical and, second, that they are intended for mass consumption. They are thus primarily sold in self-service stores where consumers choose the product themselves and the visual aspect of the signs at issue will, as a general rule, be more important.
87      In the second place, it follows from all of the foregoing that the signs at issue have a below-average degree of visual similarity, in view of the fact that their dominant or co-dominant elements ‘4011’ and ‘b 552’ are common to them, are not descriptive of the product in question and are, therefore, distinctive. In addition, the differences relating to the presence within the mark applied for of figurative and word elements with a weak distinctive character and of the co-dominant element ‘aljamal’ do not make it possible, as the Board of Appeal correctly found, to establish a lack of visual similarity between those signs. Moreover, as has been pointed out in paragraphs 73 to 83 above, those signs are phonetically at least similar and conceptually similar to a below-average degree.
88      Consequently, in view of the fact that the goods in question are identical, the distinctive character of the elements ‘4011’ and ‘b 552’ common to the marks at issue, the below-average degree of visual similarity between the signs at issue, which is the predominant aspect for goods intended for mass consumption, as well as their below-average degree of conceptual similarity and their phonetic similarity, the Board of Appeal was right to find that there was a likelihood of confusion between the marks at issue for the relevant public.
Costs
89      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.
90      Since a hearing has been convened and the applicant has been unsuccessful, it must be ordered to pay the costs incurred before the Court, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Laura Food Srl to pay the costs.
Mastroianni
Brkan
Gâlea
Delivered in open court in Luxembourg on 30 April 2025.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.