JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
13 July 2017 (*)
(EU trade mark — Invalidity proceedings — EU figurative mark CReMESPRESSO — Earlier international word mark CREMESSO — Allusive element — Interdependence of criteria — Likelihood of confusion — Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009)
In Case T‑189/16,
Migros-Genossenschafts-Bund, established in Zürich (Switzerland), represented by M. Treis, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by H. O’Neill and I. Moisescu, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Luigi Lavazza SpA, established in Turin (Italy), represented by M. Ricolfi and F. Tarocco, lawyers,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 23 February 2016 (Case R 2823/2014-4) relating to invalidity proceedings between Migros-Genossenschafts-Bund and Luigi Lavazza,
THE GENERAL COURT (Fifth Chamber),
composed of D. Gratsias, President, A. Dittrich and P.G. Xuereb (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 27 April 2016,
having regard to the response of EUIPO lodged at the Court Registry on 30 August 2016,
having regard to the response of the intervener lodged at the Registry of the Court on 6 September 2016,
having regard to the fact that no request for a hearing was submitted by the main 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 10 October 2013, the intervener, the company Luigi Lavazza SpA, obtained from the European Union Intellectual Property Office (EUIPO), on the basis of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) registration of the following European Union figurative mark:
2        The goods in respect of which registration was obtained are in Classes 7, 11 and 30 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 7: ‘Electric ice crushers’;
–        Class 11: ‘Ice cream makers, ice cream machines, but also coffee machines’;
–        Class 30: ‘Coffee, mixtures of coffee, decaffeinated coffee, coffee extracts and artificial coffee, cocoa, sugar, edible ices, ice for refreshment’.
3        On 5 November 2013, the applicant, Migros-Genossenschafts-Bund, filed with EUIPO an application for a declaration of invalidity of the mark at issue, pursuant to Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, in respect of all the goods referred to in paragraph 2 above.
4        The application for a declaration of invalidity was based on the earlier international word mark CREMESSO, registered on 8 January 2007 under number 912641, with effect, inter alia, in the European Union and designating the goods in Classes 7, 11, 21 and 30, corresponding, for each of those classes, to the following description:
–        Class 7: ‘Electric coffee grinders, electric machines for extracting coffee’;
–        Class 11: ‘Electric coffee machines, electric coffee makers and electric coffee percolators as well as parts of these goods, included in this class’;
–        Class 21: ‘Dispensers of capsules (portions) particularly of coffee, tea, cocoa, soups, meat and vegetable stock intended for household use; strainers for household use; tableware and containers for household and kitchen use (not of precious metals, or coated therewith), tableware made of porcelain, chromium steel and ceramics included in this class; paper trays for household use; non-metal trays for household use’;
–        Class 30: ‘Coffee portions in capsules for Cremesso-type coffee machines’.
5        By decision of 24 October 2014, the Cancellation Division partly granted the application for a declaration of invalidity of the mark at issue in so far as it related to ‘Electric ice crushers’ in Class 7, ‘Ice cream makers, ice cream machines, but also coffee machines’ in Class 11 and to ‘Coffee, mixtures of coffee, decaffeinated coffee, coffee extracts and artificial coffee, cocoa’ included in Class 30. The registration of the mark at issue was maintained for the following goods: ‘Sugar, edible ices, ice for refreshment’ in Class 30.
6        On 4 November 2014, the intervener filed a notice of appeal with EUIPO against the decision of the Cancellation Division, pursuant to Articles 58 to 64 of Regulation No 207/2009.
7        By decision of 23 February 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO upheld the appeal and partially annulled the decision of the Cancellation Decision in so far as it related to part of the goods, namely ‘Electric ice crushers’ in Class 7 and ‘Ice cream makers, ice cream machines, but also coffee machines’ in Class 11. The registration of the mark at issue was, therefore, maintained for those goods.
8        By contrast, the appeal was dismissed with respect to ‘Coffee, mixtures of coffee, decaffeinated coffee, coffee extracts and artificial coffee, cocoa’ in Class 30.
9        As regards the signs at issue, the Board of Appeal concluded that they were visually and conceptually similar to a certain degree and aurally similar to an average degree.
10      After having concluded, on the basis of the allusive nature of the earlier trade mark — due to the fact that the latter made a vague allusion to the word ‘cream’ or to the state of ‘creaminess’ which is a concept associated with coffee, cocoa and ice cream — that the inherent distinctive character of that trade mark was slightly below average, the Board of Appeal concluded that there was no likelihood of confusion between the contested marks as regards the goods in Classes 7 and 11 of the mark at issue. According to the Board of Appeal, in the light of the principle of interdependence, the low degree of similarity of the contested marks, in the present case, would require some degree of enhanced distinctiveness, even for identical goods. However, the applicant has not shown that the earlier trade mark had an enhanced distinctive character by reason of intensive use or reputation. Therefore, there is no likelihood of confusion with respect to ‘Electric ice crushers’ and ‘Ice cream makers, ice cream machines, but also coffee machines’ in Classes 7 and 11.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision in so far as the Board of Appeal upheld the intervener’s appeal and partially annulled the decision of the Cancellation Division in so far as it related to ‘Electric ice crushers’ and ‘Ice cream makers, ice cream machines, but also coffee machines’ in Classes 7 and 11, covered by the trade mark at issue;
–        order EUIPO and the intervener to pay the costs.
12      EUIPO and the intervener contend that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
13      In support of its action, the applicant puts forward a number of complaints which may be analysed as supporting a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
14      It should be noted, at the outset, that, according to Article 53(1)(a) of Regulation No 207/2009, an EU trade mark is to be declared invalid on application to EUIPO where there is an earlier trade mark as referred to in Article 8(2) of that regulation and the conditions set out in paragraph 1 or paragraph 5 of that article are fulfilled.
15      Under Article 8(1)(b) of that regulation, a trade mark is to be refused registration if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the two trade marks, there is 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.
16      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 the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods 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).
17      In the present case, the applicant complains that the Board of Appeal committed several errors of assessment, namely, first, it wrongly defined the level of attention of the relevant public with respect to the goods in Classes 7 and 11 covered by the mark at issue, secondly, it incorrectly classified the degree of similarity between the signs at issue as low and, thirdly, it wrongly concluded that there was no likelihood of confusion between those signs as regards the goods referred to in its application.
The scope of the action
18      It should be noted that the application contains an ambiguity concerning the question whether the ‘Sugar, edible ices, ice for refreshment’ in Class 30 covered by the mark at issue are also the subject of the present action. First, the forms of order and the introductory summary of the pleas in law put forward by the applicant refer solely to the ‘Electric ice crushers’ and ‘Ice cream makers, ice cream machines, but also coffee machines’ in Classes 7 and 11 covered by the mark at issue. Secondly, in paragraph 11 of its application, the applicant claims that the mark at issue should be cancelled in its entirety — which includes also the goods in Class 30 covered by the mark at issue.
19      EUIPO calls into question the admissibility of the applicant’s argument, on the ground that the latter had not brought an appeal before the Board of Appeal against the specific part of the Cancellation Division’s decision concerning the goods ‘Sugar, edible ices, ice for refreshment’ in Class 30 covered by the mark at issue. As for the intervener, it contends that it was a simple mistake in paragraph 11 of the application, which resulted from the applicant’s failure to indicate clearly and precisely that it did not challenge, before the Board of Appeal, the part of the Cancellation Division’s decision according to which the mark at issue remained registered for those specific goods in Class 30.
20      It should be noted that the Board of Appeal did not examine whether there existed a likelihood of confusion with respect to the ‘Sugar, edible ices, ice for refreshment’ in Class 30 covered by the mark at issue. As it correctly noted, in paragraph 10 of the contested decision, the applicant had not contested the Cancellation Division’s decision concerning the continued registration of the mark at issue with respect to those goods and, therefore, that decision had become final with regard to them.
21      It should, moreover, be noted that it is clearly apparent from the forms of order sought by the applicant that it seeks annulment of the contested decision solely in so far as the Board of Appeal upheld the intervener’s action and partially annulled the Cancellation Division’s decision to the extent that it concerned the ‘Electric ice crushers’ and ‘Ice cream makers, ice cream machines, but also coffee machines’ in Classes 7 and 11 covered by the mark at issue.
22      In those circumstances, it must be held that paragraph 11 of the application does indeed contain an error. The application cannot be interpreted as meaning that the action relates solely to the ‘Electric ice crushers’ and ‘Ice cream makers, ice cream machines, but also coffee machines’ in Classes 7 and 11 covered by the mark at issue and not to the ‘Sugar, edible ices, ice for refreshment’ in Class 30 covered by that mark.
23      In any event, it should be noted that, 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. It is for the General Court, in the context of a dispute brought before it, to review the legality of decisions taken by the Boards of Appeal. Consequently, the Court’s review cannot go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 22 June 2004, ‘Drie Mollen sinds 1818’ v OHIM — Nabeiro Silveria (Galáxia), T‑66/03, EU:T:2004:190, paragraph 45 and the case-law cited). In the light of the matters set out above, even assuming that the action must be interpreted as including also an application for annulment concerning the ‘Sugar, edible ices, ice for refreshment’ in Class 30 covered by the mark at issue, that application should be declared inadmissible.
The relevant public and its level of attentiveness
24      According to the case-law, 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 May 2015, Ferring v OHIM — Kora (Koragel), T‑169/14, not published, EU:T:2015:280, paragraph 21 and the case-law cited).
25      Furthermore, it should be noted that the relevant public consists of consumers likely to use both the goods or services covered by the earlier mark and the goods and services of the mark at issue (see judgment of 28 April 2016, Zehnder Group International v EUIPO — Stiebel Eltron (comfotherm), T‑267/14, not published, EU:T:2016:252, paragraph 25 and the case-law cited).
26      In the present case, it should be noted first of all that, in the light of the fact that the earlier international mark designates inter alia the European Union, the relevant territory for the assessment of the likelihood of confusion is the territory of the European Union, as the Board of Appeal correctly stated and which, moreover, is not disputed by the applicant.
27      Next, it should be noted that the Board of Appeal correctly held, without being contradicted on this point by the applicant, that the goods concerned by the contested marks were directed at both the public at large and professionals, such as owners of restaurants, cafeterias, bars and ice cream parlours.
28      Finally, as regards the level of attention of the relevant public, the Board of Appeal held that the ‘Electric ice crushers’ and ‘Ice cream makers, ice cream machines, but also coffee machines’ in Classes 7 and 11 covered by the mark at issue are durable goods, which are acquired on an occasional basis and with respect to which consumers display a higher level of attention than with respect to everyday consumer goods. According to the Board of Appeal, the purchase of those goods — which are moreover not low-price essential goods — is made by attentive consumers, after careful consideration and following a careful visual examination, which leaves less room for an imperfect recollection of a certain earlier mark. As regards less well-informed consumers, who occasionally take an interest in the goods at issue, the Board of Appeal maintains that they would request, in any case, the opinion of professional sellers before making their purchase.
29      The applicant contests the Board of Appeal’s assessment relating to the level of attention of the relevant public regarding the goods in Classes 7 and 11, covered by the mark at issue. In its opinion, that assessment is vitiated by a fundamental error, in the light of the fact that — contrary to the Board of Appeal’s assertion — those goods are low-cost, mass-market goods, which in no way require careful selection and inspection on the part of purchasers. In view, in particular, of their low price — in that regard, the applicant annexes to its application two results of research carried out on the internet showing that, for example, coffee machines are nowadays available from EUR 14.99 — those goods are purchased quickly, without the need for professional advice or careful prior examination on the part of consumers. Moreover, the applicant claims that the EUIPO Guidelines, in Part C, Section 2, Chapter 3, p. 10, state that ‘“electric kitchen machines” are not valuable goods or technically complicated machines, in relation to which the EU consumer would apply a substantially higher level of attention’.
30      EUIPO and the intervener consider that the Board of Appeal was correct to hold that the relevant public displays a greater level of attention in respect of goods which are, as in the present case, in Classes 7 and 11, than in respect of everyday consumer goods, since the goods referred to by the signs at issue were durable goods which were acquired on an occasional basis. Moreover, EUIPO shares the Board of Appeal’s opinion that the electric kitchen machines in Classes 7 and 11 were not low-cost essential goods. In any event, according to EUIPO and the intervener, the price of goods is only one aspect amongst many which is taken into account by consumers when purchasing goods, including, for example, the aesthetics of the machines, their quality, capacity and durability. Finally, EUIPO maintains that the guidelines referred to by the applicant are not binding legal acts for the interpretation of the provisions of EU law and that, in any event, the version of those guidelines relied on by the applicant in no way refers to ‘electric kitchen machines’.
31      It should be pointed out that, in the light of established case-law, the mere fact that one type of goods is not regularly purchased by consumers indicates that the level of attention of those consumers is rather high (see, to that effect, judgment of 13 October 2009, Deutsche Rockwool Mineralwoll v OHIM — Redrock Construction (REDROCK), T‑146/08, not published, EU:T:2009:398, paragraph 45 and the case-law cited).
32      More particularly, it is apparent from the case-law that, when purchasing durable goods which are acquired on an occasional basis, consumers display a higher level of attention than for the acquisition of everyday consumer goods (see judgment of 16 November 2011, Dorma v OHIM — Puertas Doorsa (doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS), T‑500/10, not published, EU:T:2011:679, paragraph 65 and the case-law cited).
33      In view of the above, it must be concluded that the level of attention of consumers of the goods in Classes 7 and 11, covered by the mark at issue, must be considered to be higher than usual, and therefore fairly high.
34      That conclusion cannot be called into question by the applicant’s arguments that, as a result, first, of their low price and, secondly, of considerations which were set out by EUIPO in its Guidelines, to which reference is made in paragraph 29 above, the goods at issue do not require that consumers display a high level of attention when they purchase those goods.
35      It must be considered that, as a result of their durability, the goods at issue require, at the time of their purchase, a higher level of attention than do everyday consumer goods, and that regardless of their price. Moreover, as regards the price of those goods, it must be noted that the applicant merely presented several results of research carried out on the internet showing that certain coffee machines could be acquired at low prices. However, as EUIPO correctly states, the examples of coffee machines sold at very low prices are more the exception than the rule in that sector.
36      Furthermore, the conclusion reached in paragraph 33 above holds notwithstanding the applicant’s argument that the EUIPO Guidelines and, more particularly, Part C, Section 2, Chapter 3, p. 10 thereof, indicate that electric kitchen machines are not valuable goods or technically complicated machines in relation to which the EU consumer would apply a high level of attention.
37      It suffices to note, in that regard, that it is settled case-law that the decisions concerning the registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion and, accordingly, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union (see judgment of 19 January 2012, OHIM v Nike International, C‑53/11 P, EU:C:2012:27, paragraph 57 and the case-law cited) and not on the basis of guidelines adopted by EUIPO.
38      It is apparent from all the foregoing considerations that the Board of Appeal was correct to hold, in paragraphs 22 and 35 of the contested decision, that, since the goods in Classes 7 and 11 covered by the mark at issue are durable goods, acquired on an occasional basis, they are purchased by attentive consumers — both average consumers and professionals — who display a higher level of attention than for the acquisition of everyday consumer goods.
Comparison of the goods at issue
39      The Board of Appeal correctly held, with no objection on this matter being raised by the parties, that the goods at issue were in part identical and in part similar.
The comparison of the signs at issue
40      The global assessment of the likelihood of confusion must, in relation to the visual, aural or conceptual similarity of the signs at issue, be based on the overall impression produced by those signs, taking into account, inter alia, 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 that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 28 September 2016, The Art Company B & S v EUIPO — G-Star Raw (THE ART OF RAW), T‑593/15, not published, EU:T:2016:572, paragraph 21 and the case-law cited).
41      As regards the Board of Appeal’s findings relating to the similarity of the signs at issue, the applicant argues, in essence, that the Board of Appeal’s analysis focused more on the differences than on the similarities between the two marks. According to the applicant, the Board of Appeal’s conclusion on that issue is erroneous, in so far as, first, it failed to correctly assess numerous aspects in which the two marks correspond and, secondly, it omitted to take into account several factors, which are highly relevant for the purpose of showing their similarity. In the light of those factors, the degree of similarity between the signs at issue is, in reality, high. Therefore, the Board of Appeal was wrong to hold that the two marks were visually and conceptually similar only to a certain degree and, aurally similar to an average degree.
The visual similarity
42      The Board of Appeal held that, visually, the signs at issue were significantly different. First, the mark at issue not only contained a highly stylised, lower-case ‘e’, inserted among the standard upper-case letters, but, in addition, its element ‘crem’ was written in bold — which gives it more weight and makes it more prominent than the element ‘espresso’ which was written in lighter and slimmer characters. The Board of Appeal therefore concluded that the figurative element ‘crem’ was the dominant element of the sign at issue. Secondly, it asserted that the earlier mark, which was written homogenously, in standard upper-case letters, did not contain any eye-catching, dominant elements. The Board of Appeal considered, moreover, that the latter also differed from the mark at issue in so far as it did not contain the group of letters ‘espr’. The Board of Appeal however concluded that there was a certain degree of visual similarity between the contested marks, to the extent that they both began with the expression ‘crem’ and ended with the group of letters ‘esso’.
43      The applicant challenges the Board of Appeal’s assessment for several reasons. First, it claims that the latter, even though it held that the element ‘crem’ was the dominant element of the sign at issue, omitted to point out that the same applied to the earlier mark. According to the applicant, there is identity concerning the dominant element of the two signs, namely, the word element ‘crem’, which, more importantly, marks the beginning of those respective signs; therefore, the relevant public would keep in mind that word element. Secondly, the applicant complains that the Board of Appeal gave disproportionate significance to the figurative element of the mark at issue and, more particularly, to the stylisation of the letter ‘e’, included in the element ‘crem’ of the latter. According to the applicant, the stylisation used for the writing of that letter is banal and is, therefore, not creative. Given its commonplace form, it has a low degree of distinctiveness; that letter will therefore be perceived as a purely decorative element. Consequently, the applicant considers that the graphic elements of the mark at issue are not capable of influencing the overall impression produced by that mark, or distinguish it only to a very weak degree from the earlier word mark. In any event, in so far as the latter was registered in the form of standard upper-case letters, it manifestly claims protection for the written variations CReMESSO and CReMESSO.
44      EUIPO and the intervener refute the applicant’s arguments, by supporting the arguments put forward on that issue by the Board of Appeal in the contested decision.
45      It should be noted, first of all, that, as regards the visual comparison of two marks, the Court has already pointed out that there is no reason why it should not be determined whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have a graphic form capable of creating a visual impression (see, to that effect, judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).
46      In the present case, it should be noted, first, that the contested marks differ in that the group of letters ‘espr’, in the middle of the mark at issue, has no counterpart in the earlier mark, as well as in the stylisation of the element ‘crem’ of the mark at issue.
47      Secondly, the two signs have in common the element ‘crem’ which marks, moreover, the beginning of those signs. In addition, the signs also coincide in the final group of letters ‘esso’. Visually, the word elements of the contested marks share the first four and the last four letters of the signs at issue.
48      In that regard, it should be noted that, according to settled case-law, as far as marks containing word elements are concerned, consumers generally pay greater attention to the beginning of a mark than to the ending (see, to that effect, judgment of 6 October 2015, Monster Energy v OHIM — Balaguer (icexpresso + energy coffee), T‑61/14, not published, EU:T:2015:750, paragraph 45 and the case-law cited). It is admittedly true that that finding cannot apply in all cases and that it cannot, in any event, call into question the principle that the assessment of the similarity of marks must take account of the overall impression produced by those marks, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgment of 9 April 2014, Farmaceutisk Laboratorium Ferring v OHIM — Tillotts Pharma (OCTASA), T‑501/12, not published, EU:T:2014:194, paragraph 58).
49      Moreover, it should be pointed out that the EU Courts have also acknowledged that, although the consumer often attaches importance to the first part of words, his visual attention may focus just as much on the last letters of the signs (see, to that effect, judgment of 12 January 2006, Devinlec v OHIM — TIME ART (QUANTUM), T‑147/03, EU:T:2006:10, paragraph 72 and the case-law cited).
50      In view of the above and, in particular, of the case-law just cited, it must be noted that, in the present case, the existence in the two signs of the same root, namely the root ‘crem’, creates a visual similarity, which is, moreover, enhanced by the fact that those signs contain the ending ‘esso’. Furthermore, it must be pointed out that all of the letters of the earlier mark CREMESSO are included in the mark at issue CReMESPRESSO. It follows that the visual difference between those signs, highlighted in paragraph 46 above, namely the existence of four additional letters, the letters ‘e’, ‘s’, ‘p’ and ‘r’, included in the mark at issue and which are not in the earlier mark can only have an incidental impact on the overall impression produced by the mark at issue (see, by analogy, judgment of 13 June 2012, XXXLutz Marken v OHIM — Meyer Manufacturing (CIRCON), T‑542/10, not published, EU:T:2012:294, paragraphs 43 and 44 and the case-law cited).
51      As regards the stylisation of the first four letters ‘crem’ of the mark at issue, it is necessary to assess whether, as suggested by the Board of Appeal, and, as asserted by both EUIPO and the intervener in their written pleadings, the stylisation of those letters could have a decisive impact on the overall impression produced by that sign.
52      In that regard, it should first of all be noted that, according to well-established case-law, in the case of a mark consisting of both word and figurative elements, the word elements must generally be regarded as more distinctive than the figurative elements, or even as dominant, since the relevant public will keep in mind the word elements to identify the mark concerned, the figurative elements being perceived more as decorative elements (see, to that effect, judgment of 6 December 2013, Premiere Polish v OHIM — Donau Kanol (ECOFORCE), T‑361/12, not published, EU:T:2013:630, paragraph 32 and the case-law cited).
53      In the present case, it must be noted that the typeface used to represent the element ‘crem’ of the mark at issue is not particularly original. First, the letter ‘e’, which appears somewhat larger and more fanciful than usual, is however not very different from the usual letter ‘e’. Secondly, the other letters of that element are simply written in bold. It follows that the figurative element ‘crem’ is not a special configuration liable to significantly influence the overall impression produced by the mark at issue. It has, moreover, already been held that, where a graphic element of a figurative mark could be regarded as rather banal and not very imaginative, as in the present case, it could not be concluded that that graphic element was liable to create an image of the mark which the relevant public would keep in mind and therefore significantly influence the global impression produced by that mark. In such a case, according to the case-law, the comparison of the signs may be carried out on the basis of the word element alone, whilst still adhering to the principle that an assessment of the likelihood of confusion, with regard to the similarity of the signs, must be based on the overall impression given by them (see, by analogy, judgment of 1 July 2014, Jyoti CeramicIndustries v OHIM — DeguDent (ZIECON), T‑239/12, not published, EU:T:2014:592, paragraph 45 and the case-law cited).
54      As regards the impact of the second component of the mark at issue, namely the element ‘espresso’, it should be noted that — as the applicant correctly pointed out and as was besides acknowledged by the other parties — due to its descriptiveness of the goods at issue and, more particularly, of ‘coffee machines’, that element had only a secondary influence in the overall impression produced by the mark at issue.
55      Finally, another element which should be taken into account in the assessment of the degree of visual similarity between the signs at issue relates to the possible classification of the element ‘crem’ as the dominant element of the earlier mark. In that regard, first, it must be noted that the applicant complains that the Board of Appeal only considered that that element constituted the dominant element of the mark at issue, by failing to note that the same was the case for the earlier mark. Secondly, EUIPO and the intervener align themselves on the Board of Appeal’s interpretation on that issue, asserting that the element ‘crem’ could not constitute the dominant element of the earlier mark, in so far as the latter is a word mark, consisting of a single word, written in a standard typeface. On that issue, moreover, the two parties contest the applicant’s argument that, in so far as the earlier mark was registered in the form of standard capital letters, it could also claim protection for variations of stylisation CReMESSO and CReMESSO.
56      It should be pointed out, first of all, that, contrary to what the applicant appears to claim, the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the graphic or stylistic characteristics which that mark might possess. According to the case-law, word marks are marks consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (see, to that effect, judgment of 7 October 2010, Accenture Global Services v OHIM — Silver Creek Properties (acsensa), T‑244/09, not published, EU:T:2010:430, paragraph 28 and the case-law cited). Therefore, the applicant’s claim that the protection of the earlier mark held by it would also apply with respect to the variations of stylisation CReMESSO and CReMESSO must be rejected.
57      Moreover, it should be noted, without it even being necessary to adopt a position on the possible classification of the element ‘crem’ as the dominant element of the earlier mark, that, because of its position and size in the earlier mark, that element is not negligible and in no way ancillary to the other elements of the sign at issue. Therefore, even assuming that it is necessary to conclude that that element is not the dominant element of the earlier mark, that fact does not, in any event, have any impact on its primary importance in the overall impression produced by that mark.
58      In the light of all the foregoing considerations and, more particularly, in view of the similarities noted between the signs at issue, as pointed out in paragraphs 47 to 57 above, it should be noted that the visual similarity between those signs must be considered to be rather high. Therefore, the Board of Appeal was wrong to conclude on the basis of differentiating elements between the two signs, that they were visually similar only ‘to a certain degree’.
The aural similarity
59      The Board of Appeal stated, in paragraph 28 of the contested decision, that, aurally, the signs at issue shared three syllables, namely ‘crem’, ‘es’ and ‘so’. It asserted that those syllables were pronounced identically, and that irrespective of the rules of pronunciation of the various parts of the relevant territory, namely that of the 28 Member States of the European Union. However, the Board of Appeal considered that, in so far as the second syllable of the sign at issue was missing from the earlier sign — which was, moreover, shorter — the stress and the rhythm of the pronunciation of the two signs could differ. The Board of Appeal concluded that the degree of aural similarity is average.
60      The applicant contests the Board of Appeal’s assessment, claiming that, due to their identical beginning and ending, namely the groups of letters ‘cremes’ and ‘so’, the two signs at issue are, in reality, highly aurally similar. According to the applicant, the aural similarity is, moreover, enhanced by the fact that the aural stress in the two signs was placed on the second syllable ‘es’, which was identical in the two signs. Finally, the applicant claims that the third syllable of the mark at issue, consisting of the sequence of letters ‘pres’, is not stressed.
61      EUIPO considers that the Board of Appeal correctly assessed the degree of aural similarity between the contested marks.
62      As for the intervener, it contests the applicant’s argument that, aurally, the two signs are highly similar. Referring to the line of case-law according to which ‘even though the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him’ (see judgment of 20 September 2011, Dornbracht v OHIM — Metaform Lucchese (META), T‑1/09, not published, EU:T:2011:495, paragraph 42 and the case-law cited), the intervener emphasises the impact of the second element of the mark at issue ‘espresso’ on the assessment of the aural similarity between the signs at issue. In particular, the intervener contends that it is likely that the relevant public will perceive the element ‘espresso’ of the mark at issue as an independent element and that, therefore, the difference between the two signs at issue is not limited to the meaningless syllable ‘pres’, but extends to the component ‘espresso’ as a whole. That would have consequences for the assessment of the aural similarity between the contested marks, in so far as the existence of a second independent component in the mark at issue results in a different stress and rhythm of pronunciation.
63      It should be noted, first of all, that all eight letters of the mark CREMESSO are included in the mark CReMESPRESSO. Moreover, those letters are in the same order in those signs, the first six letters of which, namely ‘c’, ‘r’, ‘e’, ‘m’, ‘e’ and ‘s’, and the last two letters, namely ‘s’ and ‘o’, are identical.
64      Admittedly, the syllabic structure of the signs at issue is different, since the mark at issue consists of four syllables, namely the syllables ‘crem’, ‘es’, ‘pres’ and ‘so’, and the earlier mark only of three, namely the syllables ‘crem’, ‘es’ and ‘so’. However, the first syllable of the signs at issue is identical. In that regard, it should be borne in mind that, as was mentioned in paragraph 48 above, consumers normally focus particularly on the beginning of a word.
65      Moreover, it should be noted that the three syllables ‘crem’, ‘es’ and ‘so’ are identical in the two signs. In that regard, it must be concluded, as the Board of Appeal correctly asserted in paragraph 28 of the contested decision, that those syllables are pronounced identically, irrespective of the pronunciation rules of the different parts of the relevant territory of the 28 Member States of the European Union.
66      In view of the foregoing considerations, it must be concluded that the Board of Appeal was wrong to hold that, since the mark at issue contains an additional syllable, namely the syllable ‘pres’, the signs at issue were of only average aural similarity. It must be held that, aurally, there is a rather high similarity between the signs at issue.
67      That conclusion cannot be called into question by the fact that the sound of the group of letters ‘pres’ of the mark at issue has no equivalent in the earlier mark, or by the argument set out by the intervener relating to the impact that the second component ‘espresso’ of the mark at issue, interpreted independently, could have on the degree of aural similarity, in so far as, in any event, the aural similarity between two signs must be assessed on the basis of the overall impression produced by their full pronunciation (see, to that effect, judgment of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 85).
The conceptual similarity
68      The Board of Appeal considered that, although the mark at issue clearly evoked the idea of a ‘creamy espresso’, the earlier mark was allusive to some degree, given that it vaguely referred to the word ‘cream’ or to the state of ‘creaminess’ — a concept associated with coffee, cocoa or ice cream. Consequently, it held that the inherent distinctive character of the earlier mark had to be regarded as slightly lower than average.
69      The Board of Appeal however considered, in paragraph 29 of the contested decision, that, in so far as the two signs at issue begin with the element ‘crem’, they are conceptually similar to a certain extent.
70      The applicant does not contest the Board of Appeal’s assessment concerning the allusive nature of the element ‘crem’. However, as in the context of its arguments contesting the degree of visual similarity found by the Board of Appeal, the applicant emphasises, with regard to the conceptual similarity, that that element ‘crem’, because of its size and position in the signs at issue, is an element which is likely to catch the attention and be kept in mind by consumers. That is particularly so in the case concerning the mark at issue, the second component of which ‘espresso’ is undoubtedly descriptive of coffee machines and would therefore not be perceived as the dominant element of that mark. That element cannot be given more than a minimal weight when comparing the signs at issue.
71      EUIPO and the intervener refute the applicant’s arguments. More particularly, the intervener contends that, in so far as the mark at issue includes the word ‘espresso’, which should, moreover, be interpreted as an independent element, that implies a clear conceptual difference between the signs at issue.
72      It must be pointed out that the Board of Appeal was correct to hold, in paragraph 29 of the contested decision, that, as a result of the identity of the two signs at issue as regards the allusive element ‘crem’, there was a conceptual similarity between those signs. However, it must be noted that it was wrong to hold that the two signs were conceptually similar only to a certain degree, due to the fact that, even though the mark at issue clearly evoked the idea of a ‘creamy espresso’, the earlier mark made only a vague reference to the word ‘cream’ or to the state of ‘creaminess’, a concept which is only indirectly associated with coffee, cocoa and ice creams.
73      It must be noted that, due to its components ‘crem’ and ‘esso’, the earlier mark is also likely to evoke, in the mind of the average consumer, the image of a creamy drink based on espresso coffee. That finding applies, moreover, all the more as regards the part of the relevant public which does not speak, in particular, Italian, Spanish or Portuguese, given that the word ‘espresso’ is extensively used throughout the entire territory of the Union to designate a coffee-based drink. Therefore, in so far as the average consumer who does not speak Italian, Spanish or Portuguese is, in general, not used to being exposed to the ending ‘esso’, but uses or hears daily the word ‘espresso’, it is highly likely that that consumer will associate the word sign CREMESSO with a creamy drink based on espresso coffee. Therefore, it must be concluded that the degree of conceptual similarity between the two signs at issue must be classified, at least, as average.
74      Secondly, as regards the Board of Appeal’s finding that the distinctive character of the earlier mark should be regarded as being slightly lower than average, it should be pointed out that it has already been held that ‘it [was] necessary to distinguish between the notion of the distinctive character of the earlier mark, which determine[d] the protection afforded to that mark, and the notion of the distinctive character which an element of a composite mark possesse[d], which determine[d] its ability to dominate the overall impression created by the mark’ (order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraph 43). While it is true that it is necessary to examine the distinctiveness of an element of a composite mark at the stage of assessing the similarity of the signs in order to determine any dominant element of the sign, the degree of distinctiveness of the earlier mark is an element to be taken into account in the context of the global assessment of the likelihood of confusion. It is therefore not necessary to take into consideration the possibly low degree of distinctiveness of the earlier marks at the stage of assessing the similarity of the signs’ (judgment of 25 March 2010, Nestlé v OHIM — Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe), T‑5/08 to T‑7/08, EU:T:2010:123, paragraph 65). Therefore, it must be held that the degree of distinctiveness of the earlier mark must be analysed in the context of the assessment of the likelihood of confusion.
The global assessment of the likelihood of confusion
75      The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between the goods or services designated may be offset by a greater degree of similarity between the marks and vice versa (see, to that effect, judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 28 September 2016, THE ART OF RAW, T‑593/15, not published, EU:T:2016:572, paragraph 37 and the case-law cited).
76      In the present case, the Board of Appeal’s view concerning the existence of a likelihood of confusion is set out in paragraphs 31 to 37 of the contested decision and consists, in essence, in stating that, although the goods designated by the contested marks are partially identical and partially similar and the signs at issue have an average degree of aural similarity and a certain degree of visual and conceptual similarity, there is no likelihood of confusion with respect to the ‘Electric ice crushers’ and ‘Ice cream makers, ice cream machines, but also coffee machines’ in Classes 7 and 11 — goods in respect of which the Board of Appeal considered that both average and professional consumers would, at the time of their purchase, have a higher level of attention than with respect to everyday consumer goods. More particularly, the Board of Appeal considered that since the earlier sign is, to a certain extent, allusive, its intrinsic distinctive character had to be regarded as slightly lower than average. According to the principle of interdependence, the low degree of similarity of the marks would require a certain degree of enhanced distinctiveness, even for identical goods — in the absence of which there would be no room for the factor of enhanced distinctiveness. Consequently, according to the Board of Appeal, the likelihood that the relevant public could confuse the contested marks where they are used in relation to the goods covered by those marks in Classes 7 and 11, in respect of their commercial origin, is sufficiently low to allow the marks’ coexistence on the European Union trade mark register.
77      The applicant challenges the assessment of the likelihood of confusion between the signs at issue carried out by the Board of Appeal, claiming that there was a fundamental contradiction between, on the one hand, the results of the comparisons made by the latter concerning the similarity of the signs and, on the other hand, its overall assessment of the likelihood of confusion. More particularly, the applicant complains that the Board of Appeal, without any explanation, based its global assessment of the likelihood of confusion on a ‘weak’ degree of similarity between the signs at issue.
78      EUIPO and the intervener consider that the Board of Appeal was correct to conclude that there is no likelihood of confusion.
79      It must be noted, first of all, that, as was pointed out in the context of the analysis relating to the similarity of the signs at issue, the latter have a rather high degree of visual and aural similarity and an at least average degree of conceptual similarity.
80      Next, as regards the Board of Appeal’s assessment relating to the fact that the intrinsic distinctive character of the earlier mark had to be regarded as slightly lower than average, it should be noted that, according to established case-law, even assuming that an earlier mark possesses a degree of intrinsic distinctive character which is lower than average, the potentially weak distinctive character does not, in itself, preclude a finding that there is a likelihood of confusion (see, to that effect, order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraphs 42 to 45). Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Therefore, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (judgments of 16 March 2005, L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraph 61, and of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70).
81      Moreover, it should be noted that the Board of Appeal stated, in paragraph 35 of the contested decision, that ‘these goods [were] all displayed for visual inspection, therefore a presumed higher level of aural similarity [had] much less importance’. That assertion implies that, according to the Board of Appeal, as a result of the conditions under which they are marketed, the goods at issue are perceived visually by the relevant public.
82      In that regard, it should be noted that, according to established case-law, the visual, aural or conceptual aspects of the signs at issue do not always have the same weight. It is necessary to examine the objective conditions under which the marks may be present on the market. 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 contested marks are marketed. If the goods covered by the marks in question are usually sold in self-service stores where consumers choose the goods themselves and must therefore rely primarily on the image of the trade mark applied to the product, visual similarity between the signs will, as a general rule, be more important. If, on the other hand, the goods covered are primarily sold orally, greater weight will usually be attributed to any aural similarity between the signs (see, to that effect, judgment of 21 February 2013, Esge v OHIM — De’Longhi Benelux (KMIX), T‑444/10, not published, EU:T:2013:89, paragraph 36 and the case-law cited).
83      In the present case, the goods covered by the signs at issue are intended, in particular, for the general public and can be bought in department stores and specialty shops. These shops often operate on a self-service basis, even though they employ personnel to assist customers in their choices (see, by analogy, judgment of 21 February 2013, KMIX, T‑444/10, not published, EU:T:2013:89, paragraph 38). Therefore, even though the purchase of the goods at issue may be made on the basis of an oral recommendation, the contested marks will generally be perceived visually prior to purchase.
84      It follows that the Board of Appeal did not commit an error when it held, in paragraph 35 of the contested decision, that the visual similarity between the signs at issue carried more weight than the aural similarity in the assessment of the overall similarity. The fact remains, as was shown in paragraphs 45 to 67 above, that the level of both visual and aural similarity is rather high.
85      Finally, as regards the importance attributed by the Board of Appeal to the fact that the goods in Classes 7 and 11 covered by the mark at issue enjoy a higher level of attention, amongst consumers, than everyday consumer goods, it must be noted that the level of attention of the general public is also one of the relevant factors which may be taken into account in the context of the global assessment of the likelihood of confusion.
86      According to the case-law, although the relevant public only rarely has the chance to make a direct comparison between the different marks and must rely on ‘an imperfect recollection of them’, a high level of attention on the part of the relevant public can lead to the conclusion that it will not confuse the marks at issue despite the lack of direct comparison between the marks (judgment of 22 March 2011, Ford Motor v OHIM — Alkar Automotive (CA), T‑486/07, not published, EU:T:2011:104, paragraph 95).
87      However, a high degree of attention does not permit an automatic conclusion that there is no likelihood of confusion, since all the other factors must be taken into account. In the present case, it must be held that, as a result, first, of the fact that the goods at issue are in part identical and in part similar and, secondly, of the degree of similarity between the signs at issue, the fact that the relevant public may have a rather high level of attention with respect to the goods at issue in Classes 7 and 11 cannot, in itself, substantiate a lack of a likelihood of confusion concerning those goods.
88      In the light of all the considerations set out above and, in particular, first, of the importance of the visual similarity regarding goods such as those at issue in the present case and, secondly, of the principle of interdependence of the factors which must be taken into account in the context of the global assessment of any likelihood of confusion, the Board of Appeal was wrong to exclude the existence of a likelihood of confusion between the contested marks regarding ‘Electric ice crushers’ and ‘Ice cream makers, ice cream machines, but also coffee machines’ in Classes 7 and 11.
89      It is therefore necessary to uphold the applicant’s single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
90      The contested decision must, therefore, be annulled in so far as the Board of Appeal upheld the intervener’s action and partially annulled the decision of the Cancellation Division with respect to the following goods: ‘Electric ice crushers’ and ‘Ice cream makers, ice cream machines, but also coffee machines’ in Classes 7 and 11, covered by the mark at issue.
Costs
91      Under Article 134(1) of the Rules of Procedure, the unsuccessful party shall be ordered to pay costs if the other party has so requested in its pleadings.
92      In the present case, the applicant applied for EUIPO and the intervener to be ordered to pay the costs of the present proceedings.
93      Since EUIPO and the intervener have been unsuccessful, the form of order sought by the applicant must therefore be granted and EUIPO and the intervener ordered to pay the costs incurred by the applicant in the proceedings before the Court.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 23 February 2016 (Case R 2823/2014-4), in so far as the Board of Appeal upheld the action brought by Luigi Lavazza SpA and partially annulled the decision of the Cancellation Division with respect to the following goods: ‘Electric ice crushers’ and ‘Ice cream makers, ice cream machines, but also coffee machines’ in Classes 7 and 11, covered by the mark at issue;
2.      Orders EUIPO and Luigi Lavazza to bear, in addition to their own costs, those incurred by Migros-Genossenschafts-Bund.
Gratsias
Dittrich
Xuereb
Delivered in open court in Luxembourg on 13 July 2017.
E. Coulon
D. Gratsias
Registrar
President
*      Language of the case: English.