Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

29 October 2015 (*)

(Community trade mark — Opposition proceedings — Application for the Community figurative mark CREMERIA TOSCANA — Earlier international figurative mark la Cremeria — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑256/14,

Andrea Giuntoli, residing in Barcelona (Spain), represented by A. Canela Giménez, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Palmero Cabezas, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

Société des produits Nestlé SA, established in Vevey (Switzerland), represented by A. Jaeger-Lenz and T. Bösling, lawyers,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 12 February 2014 (Case R 886/2013-2) relating to opposition proceedings between Société des produits Nestlé SA and Andrea Giuntoli,

THE GENERAL COURT (Ninth Chamber),

composed of G. Berardis, President, O. Czúcz (Rapporteur) and A. Popescu, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 23 April 2014,

having regard to the response of OHIM lodged at the Court Registry on 7 August 2014,

having regard to the response of the intervener lodged at the Court Registry on 18 August 2014,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,

gives the following

Judgment

 Background to the dispute

1        On 24 November 2010 the applicant, Andrea Giuntoli, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2        Registration as a mark was sought for the following figurative sign:

3        The goods in respect of which registration was sought are, following the restriction made before OHIM, in Classes 30, 35 and 43 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 30: ‘Edible ices, chocolate, chocolate-, coffee-, cocoa-based beverages, fruit confectionery, bread, pastry and confectionery, pancakes; cereal preparations; honey’;

–        Class 35: ‘Advertising; business management; business administration; office functions; franchise-issuing services in relation to business management assistance for ice cream parlours; information and advice in relation to the sale of foodstuffs, in particular home-made ice creams; import, export, commercial and sole agencies of foodstuffs, in particular homemade ice creams; retailing and selling via global computer networks, including the Internet, of foodstuffs, in particular home-made ice creams’;

–        Class 43: ‘Services for providing food and drink; ice-cream parlours; cafes; cafeterias; restaurants; self-service restaurants; snack-bars; food and drink catering; temporary accommodation.’

4        The Community trade mark application was published in Community Trade Marks Bulletin No 19/2011 of 28 January 2011.

5        On 22 February 2011, the intervener, Société des produits Nestlé SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for.

6        The opposition was based on international registration No 966260 of the following figurative mark, which has effect throughout the European Union:

7        That mark covers, inter alia, goods in Class 30 corresponding to the following description: ‘Coffee and coffee extracts; artificial coffee and artificial coffee extracts; tea and tea extracts, cocoa-based preparations and beverages, confectionery and chocolate products, sugar confectionery; sugars; bakery goods; pastry articles; desserts, puddings; edible ices, sorbets, frozen confectionery, iced cakes, ice desserts; products for preparing edible ices, sorbets, frozen confectionery, iced cakes, ice desserts; honey and honey substitutes; breakfast cereals; rice, flour or cereal-based foodstuffs; also in the form of cooked dishes; sauces; products for flavouring or seasoning foodstuffs; mayonnaise’.

8        The opposition was based on the goods designated by the earlier mark referred to in paragraph 7 above and was directed against the goods and services covered by the mark applied for referred to in paragraph 3 above.

9        By decision of 20 March 2013, the Opposition Division partially rejected the opposition in relation to the services covered by the application for registration, which the Opposition Division considered to be different from the goods covered by the earlier trade mark. Those services, in respect of which there was found to be no likelihood of confusion, are the following:

–        Class 35: ‘Advertising; business management; business administration; office functions; franchise-issuing services in relation to business management assistance for ice cream parlours; information and advice in relation to the sale of foodstuffs, in particular home-made ice creams; import, export, commercial and sole agencies of foodstuffs, in particular homemade ice creams; auctioneering; rental of vending machines’;

–        Class 43: ‘Services for providing food and drink; ice-cream parlours; cafés; cafeterias; restaurants; self-service restaurants; snack-bars; food and drink catering; temporary accommodation.’

10      The Opposition Division upheld the opposition in respect of the rest of the goods and services covered by the application for registration, taking the view that they were similar or identical to the goods covered by the earlier mark and that, in view of the visual and phonetic similarity of the signs, there was a likelihood of confusion.

11      On 14 May 2013, the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

12      By decision of 12 February 2014 (‘the contested decision’), the Second Board of Appeal of OHIM partially upheld the appeal brought by the intervener. The Board of Appeal partially annulled the Opposition Division’s decision in so far as it concluded that there was a likelihood of confusion not only in respect of the goods in question, but also in respect of the following services (‘food sector services’):

–        Class 35: ‘Franchise-issuing services in relation to business management assistance for ice cream parlours; information and advice in relation to the sale of foodstuffs, in particular home-made ice creams; import, export, commercial and sole agencies of foodstuffs, in particular home-made ice creams’;

–        Class 43: ‘Services for providing food and drink; ice-cream parlours; cafés; cafeterias; restaurants; self-service restaurants; snack-bars; food and drink catering’.

13      The Board of Appeal found that the goods and services in question were directed at the general public, which includes average consumers, and, in respect of some services, professionals, with the result that the public’s level of attention could vary from average to high. The Board of Appeal went on to consider that the goods covered by the signs at issue in Class 30 were identical. It considered that there was a high degree of similarity between the ‘edible ices’ in Class 30 and the food sector services in Class 35, in view of the close link between any product and its marketing. The Board of Appeal also concluded that the goods in Class 30 are similar to the food sector services in Class 43 because they are complementary. Furthermore, the Board of Appeal upheld the Opposition Division’s conclusion that, owing to the partial correspondence between them, the signs at issue were phonetically and visually similar. Finally, the Board of Appeal found that the earlier mark displayed a normal degree of distinctiveness for the relevant public, with the exception of the Italian-speaking public, which would perceive the distinctive character of certain goods as weak. As regards services other than those belonging to the food sector, the Board of Appeal upheld the Opposition Division’s decision that there was no likelihood of confusion.

14      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM and the intervener to pay the costs.

15      OHIM and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

16      In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. The applicant disputes only the comparison of the signs made by the Board of Appeal and submits that the word ‘cremeria’ will be understood by a large part of the relevant public, with the result that it is a descriptive element referring to the goods and services in question.

17      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(iv) of Regulation No 207/2009, ‘earlier trade marks’ include trade marks registered under international arrangements which have effect in the European Union, with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

18      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or, as the case may be, 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 of the 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 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 32 and the case-law cited).

19      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, in order to refuse to register a Community trade mark, it is sufficient that a relative ground for refusal under Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 76 and the case-law cited).

 The relevant public

20      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 and services concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and the case-law cited).

21      In the present case, the earlier mark is an international trade mark which has effect throughout the European Union. Accordingly, as the Board of Appeal correctly found, the relevant territory is the European Union.

22      Next, the Board of Appeal concluded, in paragraph 24 of the contested decision, that the goods and some services were directed at the general public, that is to say, average consumers. The level of attention of that section of the public was, in the Board of Appeal’s view, average. In addition, other services were intended for sale to professionals with a high level of attention.

23      The applicant agrees with that assessment.

24      The Court considers that the goods in Class 30 and the food sector services in Class 43 are directed at the general public, are everyday consumer goods and services are priced at a relatively low level. Consequently, the relevant public’s level of attention is, at most, average at the time of purchase. By contrast, the food sector services in Class 35 are directed at professionals, who display a higher degree of care when choosing a supplier, with the result that, in respect of those services, the relevant public’s level of attention is above average.

 The comparison of the goods

25      In the contested decision, the Board of Appeal considered that the goods covered by the signs at issue in Class 30 were identical. It found that there was a high degree of similarity between the ‘edible ices’ covered by the earlier mark and the food sector services in Class 35 covered by the mark applied for, in view of the close link between any product and its marketing. The Board of Appeal also concluded that the goods in Class 30 are similar to the food sector services in Class 43 because they are complementary.

26      The applicant agrees with that assessment and the Court considers that it is well founded and must therefore be upheld, while pointing out that the goods in Class 30 and the food sector services are highly similar because the purpose of those services is to market of the goods in question.

 The comparison of the signs

 Preliminary observations

27      According to case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (judgments of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 30, and 10 December 2008 in MIP Metro v OHIM — Metronia (METRONIA), T‑290/07, EU:T:2008:562, paragraph 41).

28      Furthermore, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the trade marks at issue, be based on the overall impression given by those marks, bearing in mind, in particular, their distinctive and dominant elements (judgments of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35, and 4 March 2009 in Professional Tennis Registry v OHMI — Registro Profesional de Tenis (PTR PROFESSIONAL TENNIS REGISTRY), T‑168/07, EU:T:2009:51, paragraph 28).

29      According to case-law, for the purposes 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 (judgments of 13 June 2006 in Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, ECR, EU:T:2006:157, paragraph 35, and 27 February 2008 in Citigroup v OHMI — Link Interchange Network (WORLDLINK), T‑325/04, EU:T:2008:51, paragraph 66).

30      The greater or lesser degree of distinctiveness of the elements common to a mark applied for and an earlier mark is one of the relevant criteria when assessing the similarity of the signs (see, to that effect, judgments of 25 March 2010 in Nestlé v OHIM — Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe), T‑5/08 to T‑7/08, ECR, EU:T:2010:123, paragraph 61; 18 May 2011 in Glenton España v OHIM — Polo/Lauren (POLO SANTA MARIA), T‑376/09, EU:T:2011:225, paragraph 35, and 12 July 2012 in Pharmazeutische Fabrik Evers v OHIM — Ozone Laboratories Pharma (HYPOCHOL), T‑517/10, EU:T:2012:372, paragraph 30).

31      In addition, it should be noted that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgment of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 25), the fact remains that, when perceiving a verbal sign, he will identify the elements which, for him, suggest a concrete meaning or resemble words known to him (judgments of 6 October 2004 in Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, ECR, EU:T:2004:292, paragraph 51, and RESPICUR, cited in paragraph 20 above, EU:T:2007:46, paragraph 57).

32       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 in OHIM v Shaker, cited in paragraph 28 above, 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 in OHIM v Shaker, cited in paragraph 28 above, EU:C:2007:333, paragraph 42, and judgment of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, 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 in Nestlé v OHIM, EU:C:2007:539, paragraph 43).

33      In the first place, in the present case, the Board of Appeal considered that the Italian-speaking public would associate the word element ‘cremeria’ of the signs at issue with ‘a dairy where they also sell pastry and ice cream, etc.’ Accordingly the Italian-speaking public would establish a direct link between that element and the goods and food sector services covered by the signs at issue. Accordingly, from the point of view of the relevant Italian-speaking public, the element ‘cremeria’ would possess only weak distinctive character. However, for a public that attributes no clear meaning to that element, it would have average distinctive character.

34      The applicant submits that the word ‘cremeria’ has meaning not only for the Italian-speaking public, but also for the Spanish and French-speaking publics. In that respect, it refers to a judgment of the Tribunal Supremo (Spanish Supreme Court) which also relates to opposition proceedings concerning the signs referred to in the present case. According to that judgment, the word ‘cremeria’ means a ‘place where butter, cheese and other dairy products are made’. It is therefore a generic and descriptive word which loses much of its distinctiveness. Since that element therefore carries relatively little weight in the comparison of the signs at issue, the comparison should be based on the other elements, which are clearly different.

35      It must be held, as the applicant correctly observes, that the word ‘cremeria’ has a very clear meaning for consumers who speak Italian, Spanish or French and refers to a place where milk or cream-based goods, including the ice cream and desserts in Class 30, are produced or sold. Accordingly, the element ‘cremeria’ is broadly descriptive of goods and services in the food sector. Accordingly, taking into account the perception of that section of the relevant public, that element, which is common to the signs at issue, carries less weight when comparing the signs.

36      None the less, for a large section of the relevant public, namely consumers who do not speak Romance languages, such as, for example, the Polish, Finnish and Hungarian publics, the word ‘cremeria’ has no meaning and does not allude to any of the goods or services covered by the signs at issue. Accordingly, when taking into account the perception of that section of the relevant public, the element ‘cremeria’ has average distinctiveness.

37      In the second place, as regards the word element ‘toscana’, the Board of Appeal considered that the Italian-speaking public of the European Union would perceive it as being the name of an Italian region, namely Tuscany. A section of the public with a native language other than Italian will also perceive the word ‘toscana’ as the name of that Italian region, given that in some languages, the word is very similar, for example Toskani in Greek, Toskāna in Latvian, Toscana in Spanish, Тоскана in Bulgarian, Toskana in German, Toscane in French and Toskaana in Estonian. In addition, the rest of the public — such as English-speaking consumers — is very likely to perceive that word as a simple reference to Italy or southern Europe in general and may associate it with the name of a place in Italy. The Board of Appeal accordingly concluded the distinctive character of that word was slightly below average, since it could suggest to the relevant public that it concerned goods (such as the pastry and confectionery in Class 30) which were typical of the Tuscany region or that the services relating to the supply of drinks featured wines from the Tuscany region.

38      The applicant does not dispute that assessment.

39      It must be concluded that the word ‘toscana’, which refers to the region of Tuscany in Italy, has close equivalents in all the languages of the European Union. Further to the examples given by the Board of Appeal in paragraph 38 above, that region is known as Toskania in Polish, Toscana in Finnish and Toszkána in Hungarian. Since this is a region known for its culture and a popular tourist destination, the majority of the relevant section of the public is able immediately to associate the word in question with the Tuscany region. Even the section of the relevant public which cannot locate the region will perceive the term ‘toscana’ as a reference to Italy or southern Europe in general. Therefore, the Board of Appeal was right to consider that the word ‘toscana’ could suggest to the entire relevant public that some of the goods covered, or available as part of the services covered, were typical of the region of Tuscany or the Mediterranean in general. The Board of Appeal was therefore correct to consider that the inherent distinctive character of that element was slightly below average.

40      Having regard to the above considerations, it is necessary to endorse the Board of Appeal’s analysis that the element ‘cremeria’ has weak distinctive character in respect of the Italian public and to add that the same holds true in respect of the Spanish and French publics. It is also necessary to uphold the Board of Appeal’s finding that the distinctive character of that element is normal for the section of the relevant public that does not speak a Romance language (see paragraph 36 above), such as, for example, the relevant Polish, Finnish and Hungarian publics. Furthermore, it is necessary to uphold the Board of Appeal’s finding that the element ‘toscana’ has slightly below average distinctive character.

41      However, it is necessary to recall the case-law cited in paragraph 19 above, to the effect that, for a Community 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 No 207/2009 exists in part of the European Union.

42      Accordingly, in the present case, it is sufficient to compare the signs at issue on the basis of the perception of the relevant public which does not speak a Romance language, since, for the public referred to in paragraph 36 above, the common element ‘cremeria’ carries greater weight in the comparison. Therefore, the perception of the signs by that public is a decisive factor in determining whether there is a likelihood of confusion.

 The visual aspect of the comparison

43      According to the contested decision, the signs are visually similar to the extent that they share the common word element ‘cremeria’ and are depicted on an oval background. They differ visually in so far as they contains different word and figurative elements, namely the graphic representation of the word element ‘cremeria’ in each sign, the additional word element ‘la’ in the earlier trade mark and the additional word element ‘toscana’ in the contested sign, the combination of colours in each sign and the stylisation of each sign.

44      The applicant states that the word ‘cremeria’, the only element common to the marks at issue, is a generic name which covers, inter alia, cream, and that that element confers distinctiveness on the earlier mark only to the extent that it forms part of the figurative element as a whole, to which OHIM accords no importance. The applicant adds that the mark applied for, as well as using the generic term ‘cremeria’ without the article ‘la’, also contains the word element ‘toscana’. All those elements appear in an oval containing a pattern and thus form a characteristic and distinctive whole. It follows that there is no visual similarity between the signs at issue.

45      It should be noted that the applicant’s arguments only apply to a public which understands Romance languages, which includes, according to the applicant, the Italian, Spanish and French publics.

46      However, it should be recalled that the element ‘cremeria’ has no meaning for the public referred to in paragraph 36 above, with the result that that element possesses an average degree of distinctiveness in the light of that public’s perception.

47      As regards the earlier mark, the colours and design of the figurative element, which allude to a thick and creamy liquid, have a certain degree of distinctiveness. However, the element ‘cremeria’ attracts significantly more attention because of its central position and length. The element ‘la’ attracts only minimal attention because of its position and smaller font. Consequently, it is the element ‘cremeria’ which plays a decisive role in the overall impression given by the earlier mark, even though it is not a dominant element which leads the relevant public to ignore the other elements present.

48      As regards the mark applied for, the figurative element is less distinctive than in the case of the earlier mark but is likely to hold, albeit to a lesser degree, the attention of the relevant public. As regards the word elements, it should be noted that, from the point of view of the relevant public referred to in paragraph 36 above, the element ‘cremeria’ has greater inherent distinctive character than the element ‘toscana’ (see paragraph 40 above).

49      In addition, according to case-law, the initial part of the word elements of a mark is liable to attract the consumer’s attention more than the following parts (judgment of 17 March 2004 in El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, ECR, EU:T:2004:79, paragraph 81). This is especially true in the present case since that part is the part that has the highest degree of distinctiveness in the mark applied for.

50      Accordingly, from a visual point of view, the relevant public will clearly pay more attention to the element ‘cremeria’ of the mark applied for than to the rest of the elements.

51      It follows from those considerations that the signs at issue correspond in terms of the word element on which the relevant public described in paragraph 36 above will focus.

52      Consequently, it is necessary to endorse the Board of Appeal’s analysis to the effect that the signs at issue are visually similar and to specify, moreover, that the degree of that similarity is average.

 The phonetic aspect of the comparison

53      The Board of Appeal found that, from a phonetic perspective, the signs at issue contained the common element ‘cremeria’, with the result that they were similar despite the presence of the elements ‘la’ in the earlier mark and ‘toscana’ in the contested sign, which have no equivalents.

54      The applicant did not put forward any specific arguments as regards the phonetic comparison.

55      It should be noted that, owing to its length and complexity, the element ‘cremeria’ determines the phonetic perception of the earlier mark by the relevant consumer.

56      As regards the mark applied for, it should be noted, from the point of view of the public described in paragraph 36 above, that the element ‘cremeria’ has no meaning, whereas the element ‘toscana’ will be widely understood and, accordingly, is less distinctive. In addition, the initial part of the word elements of a mark is more liable to attract a consumer’s attention (paragraph 49 above). Accordingly, the element ‘cremeria’ carries greater weight in the phonetic comparison than the element ‘toscana’.

57      Given that the signs at issue include the common element ‘cremeria’, which carries greater weight in the comparison than the other elements of the signs at issue, it is necessary to endorse the Board of Appeal’s analysis to the effect that those signs are similar and, furthermore, to specify that the degree of that similarity is average.

 The conceptual aspect of the comparison

58      According to the contested decision, the earlier mark conveys the concept of a ‘dairy’ for the Italian-speaking public, whereas the mark applied for refers to a dairy in some way associated with Tuscany. Accordingly, they would be conceptually similar for an Italian-speaking public. For the public which attaches no clear meaning to ‘cremeria’ but identifies the concept of ‘toscana’, the signs would be, to that extent, conceptually different, since only the mark applied for contains that concept.

59      The applicant does not put forward any specific argument concerning the public referred to in paragraph 36 above.

60      It should be noted that, according to the perception of the section of the relevant public referred to in paragraph 36 above, the element ‘cremeria’ has no meaning. However, consumers belonging to that section of the public will perceive the element ‘toscana’ as a term referring to a Mediterranean region.

61      Consequently, in view of the fact that the mark applied for contains the element ‘toscana’, which can be interpreted by the relevant public referred to in paragraph 36 above, while the earlier mark does not conjure up any image on the part of the relevant public, it must be concluded, to that extent, that the signs at issue are different.

 The likelihood of confusion

62      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular a similarity between the trade marks and between the goods or services concerned. Accordingly, a low degree of similarity between the goods or services covered may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and VENADO with frame and others, cited in paragraph 19 above, EU:T:2006:397, paragraph 74).

63      In the contested decision, the Board of Appeal concluded that there was a likelihood of confusion in respect of the goods in Class 30 and the food sector services.

64      The applicant disputes that conclusion and claims that, owing to the descriptive character of the element ‘cremeria’ the public will be able to distinguish the signs at issue, having regard, in particular, to the difference in the overall visual impressions produced by those signs.

65      First, it should be noted that the earlier mark has, according to the perception of the public referred to in paragraph 36 above, an average degree of distinctiveness, since its most dominant element, namely the word ‘cremeria’, has no meaning. Secondly, the level of attention of the relevant public is at most average in respect of the goods in Class 30 and the food sector services in Class 43, while that level of attention is higher than normal with regard to the food sector services in Class 35. Thirdly, the goods and services covered by the signs at issue are partly identical and partly highly similar. Fourthly, the signs at issue have an average degree of visual and phonetic similarity. Furthermore, there is a degree of conceptual difference between the signs at issue. However, it must be stressed that that difference derives only from the presence of the element ‘toscana’ in the mark applied for. That element has slightly below average distinctive character and has little ability to indicate the commercial origin of the goods and services covered, while, as regards the public referred to in paragraph 36 above, the element ‘cremeria’ has a normal degree of distinctiveness and is capable in itself of indicating that commercial origin.

66      Having regard to all those considerations, it is necessary to uphold the conclusion of the Board of Appeal that there is a likelihood of confusion in part of the territory of the European Union between the signs at issue, in respect of the goods in Class 30 and the food sector services.

67      Consequently, the applicant’s single plea in law must be rejected and the action therefore dismissed in its entirety.

 Costs

68      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As the applicant has been unsuccessful, it must be ordered to pay the costs incurred by OHIM and the intervener, in accordance with the form of order sought by those parties.

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby:

1.     Dismisses the action;

2.     Orders Andrea Giuntoli to pay the costs.

Delivered in open court in Luxembourg on 29 October 2015.

[Signatures]

* Language of the case: English.

© European Union
The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice. This electronic version is not authentic and is subject to amendment.