DECISION

of the Second Board of Appeal

of 5 July 2019

In case R 1144/2018-2

Advanced Technology Assets B.V.
Nieuwe Haven 27 A 1411 SG Naarden The Netherlands	Opponent / Appellant

represented by Kneppelhout & Korthals N.V., Boompjes 40, 3011 XB Rotterdam, The Netherlands

v

Coind Società Cooperativa
Via Saliceto, 22/H 40013 Castel Maggiore (BO) Italy	Applicant / Defendant

represented by Manzella & Associati S.R.L., Via dell'Indipendenza, 13, 40121 Bologna, Italy

APPEAL relating to Opposition Proceedings No B 2 916 693 (European Union trade mark application No 16 138 224)

The Second Board of Appeal

composed of S. Stürmann (Chairperson), S. Martin (Rapporteur) and A. Szanyi Felkl (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 6 December 2016, COOP INDUSTRIA - SOCIETA' COOPERATIVA (‘the applicant’) sought to register the figurative mark

for the following list of goods:

Class 30 - Coffee, teas and cocoa and substitutes therefor; Coffee in whole-bean form; Mixtures of coffee; Coffee bags; Coffee capsules; Ground coffee.

The applicant claimed the colours:

Green and black.

2. The application was published on 23 March 2017.

3. On 23 June 2017, LC Quality Ltd. (‘the opponent’) filed an opposition against the registration of the published trade mark application for all the above goods.

4. The opposition was based on the following earlier rights:

1. International Registration designating the EU No 1 315 341 for the figurative mark

filed and registered on 12 April 2016 for the following goods and services:

Class 11 ‑ Coffee machines, electric; coffee makers, electric; coffee filters, electric; roasters; coffee roasters; percolators, electric; cappuccino machines, electric; espresso machines, electric; electric appliances for making tea; kettles; electric appliances for making hot beverages;

Class 30 - Coffee; tea; cocoa; chocolate; sugar; coffee; coffee aromatics; coffee extracts; instant coffee; decaffeinated coffee; mixtures of coffee and coffee substitutes; ground coffee; coffee beans; coffee pods; coffee capsules; biodegradable and / or compostable coffee capsules;

Class 42 - Scientific and technological services and related research and design; conducting scientific research on the quality of products, services and processes; testing, analysis and evaluation of the goods and services of others for the purpose of certification; development and establishment of standards and certification criteria; test and certification services relating to quality of products, services and processes, standards and certification criteria based on them according to our requirements; controlling and inspecting the quality of products, services and third-party processes inspection of goods for quality control; services in the field of quality control, including carrying out quality controls; certification services in the context of quality control; quality control and monitoring of compliance with license terms; advisory, consultancy and information regarding the aforesaid services, including via electronic networks, including the internet; the aforesaid services including those related to coffee machines, coffee machines, coffee filters, coffee roasters, coffee roasters, percolators, cappuccino machines, espresso machines, equipment for making tea, kettles, electric appliances for making hot drinks, coffee, tea, cocoa, chocolate, coffee, coffee flavourings, coffee extracts, instant coffee, mixtures of coffee and coffee substitutes, ground coffee, coffee beans, coffee pads and coffee cups Class 45 - Granting of licenses to others for industrial property rights; advisory, consultancy and information regarding the aforesaid services, including via electronic networks, including the internet; the aforesaid services including those related to coffee, coffee capsules, coffee machines, coffee makers, coffee filters, coffee roasters, coffee roasters, percolators, cappuccino machines, espresso machines, equipment for making tea, kettles, electric appliances for making hot drinks, coffee, tea, cocoa, chocolate, coffee, coffee flavourings, coffee extracts, instant coffee, mixtures of coffee and coffee substitutes, ground coffee, organic coffee, coffee beans and coffee pod.

2. Benelux trade mark registration No 983 375 for the figurative mark

filed on 12 October 2015 and registered on 24 December 2015 for the following goods and services:

Class 11 ‑  Coffee machines, electric; coffee makers, electric; coffee filters, electric; roasters; coffee roasters; percolators, electric; cappuccino machines, electric; espresso machines, electric; electric appliances for making tea; kettles; electric appliances for making hot beverages;

Class 30 ‑  Coffee; tea; cocoa; chocolate; sugar; coffee substitutes; coffee aromatics; coffee extracts; instant coffee; decaffeinated coffee; mixtures of coffee and coffee substitutes; ground coffee; coffee beans; coffee pods; coffee capsules; biodegradable and / or compostable coffee capsules;

Class 42 ‑  Scientific and technological services and related research and design; conducting scientific research on the quality of products, services and processes; certification services; development and establishment of standards and certification criteria; test and certification services relating to quality of products, services and processes according to established standards and certification criteria; controlling and inspecting the quality of products, services and third-party processes inspection of goods for quality control; services in the field of quality control, including carrying out quality controls; certification services in the context of quality control; quality control and monitoring of compliance with license terms; advisory, consultancy and information regarding the aforesaid services, including via electronic networks, including the internet; the aforesaid services including those related to coffee machines, coffee filters, coffee roasters, percolators, cappuccino machines, espresso machines, equipment for making tea, kettles, electric appliances for making hot drinks, coffee, tea, cocoa, chocolate, coffee substitutes; coffee aromatics, coffee extracts, instant coffee, mixtures of coffee and coffee substitutes, ground coffee, coffee beans, coffee pads and coffee cups;

Class 45 ‑ Granting of licenses for industrial property rights to third parties; advisory, consultancy and information regarding the aforesaid services, including via electronic networks, including the internet; the aforesaid services including those related to coffee, coffee capsules, coffee machines, coffee makers, coffee filters, coffee roasters, percolators, cappuccino machines, espresso machines, equipment for making tea, kettles, electric appliances for making hot drinks, coffee, tea, cocoa, chocolate, coffee substitutes; coffee aromatics, coffee extracts, instant coffee, mixtures of coffee and coffee substitutes, ground coffee, organic coffee, coffee beans and coffee pods.

5. By decision of 23 April 2018 (‘the contested decision’), the Opposition Division rejected the opposition in its entirety on the grounds that there was no likelihood of confusion. It gave, in particular, the following reasons for its decision:

• The Opposition was first examined with regard to the earlier international registration No 1 315 341 designating the EU.

• The contested ‘substitutes therefor (teas and cocoa)’ are highly similar to the opponent’s ‘tea; cocoa’. The remaining contested goods are identical to the opponent’s goods.

• The conflicting goods are directed at the public at large with an average degree of attention. The relevant territory is the European Union.

• The verbal element ‘LA COMPOSTABILE’ is non-distinctive for the part of the relevant public that understands its meaning, namely ‘the compostable’. However, there is a significant part of the relevant public that does not understand the meaning of the Italian words ‘LA COMPOSTABILE’. In particular the Polish-speaking part will not understand the verbal element and will, therefore, find it distinctive. The depiction of a capsule in the contested mark is descriptive in relation to the relevant goods in Class 30. The same applies for the earlier mark. The earlier mark’s distinctiveness is very low for the contested goods and is based essentially on the very specific configuration of the capsule and the leaves.

• Visually, the signs coincide in some aspects of their figurative elements. However, the figurative elements are not the same. While the green parts in the earlier mark will be perceived visually as a component forming part of the capsule itself, namely the lid, with separate leaves on the side, in the contested mark the green elements form a separate object next to the capsule, a shoot with leaves. The capsules in the signs are also depicted in altogether different manners, as the capsule in the earlier mark is white and upside down, while the capsule in the contested sign is mostly black, the right way up and leaning to the right. Furthermore, the signs differ in that the contested sign has a verbal element, ‘LA COMPOSTABILE’, which, albeit non-distinctive or weak for part of the public, creates a significant difference between the signs, since, in principle, when signs consist of both verbal and figurative components, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. In the present case, although the verbal element is non-distinctive or weak for the goods for part of the public, the figurative elements are also non-distinctive or very weak, and the public in question would, therefore, still remember the mark, and refer to it, by the verbal element, taking into account also the visual impact of that verbal element and its fanciful stylisation, which will contribute to bringing it to the attention of the public. The signs are visually similar to a low degree.

• As the earlier mark is purely figurative, it is not possible to compare the marks aurally. Consequently, the phonetic aspect does not influence the assessment of the similarity of the signs.

• Conceptually, the figurative elements of the signs both evoke the concept of capsules, and the green leaves may create the same association with organic or environmentally friendly goods or with green tea leaves. For the Italian-speaking part of the public, the verbal element ‘LA COMPOSTABILE’ reinforces the concept of organic and environmentally friendly goods, and therefore, does not introduce any new aspect to the conceptual comparison. The verbal element in the contested sign will be perceived as meaningless by the part of the public that does not speak Italian, and it does not influence the assessment of the similarity of the signs for this part of the public. The coinciding concepts have a limited impact, as they result from elements that have a limited degree of distinctiveness. The signs are considered conceptually similar to a low degree.

• The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. As the figurative elements forming the earlier mark have only limited distinctive character, the distinctive character of the earlier mark as a whole is low for all the goods and is based essentially on the very specific configuration of the capsule and the leaves.

• Considering all the above, there is no likelihood of confusion on the part of the public, even for identical goods. This applies even to the Italian-speaking public, who would perceive the additional verbal element as non-distinctive or weak. Therefore, the opposition must be rejected.

• There is no need to examine the other earlier right invoked by the opponent, namely Benelux trade mark registration No 983 375, since the result would be the same, as it is identical to the earlier mark examined above and is registered for the same goods and services.

6. On 19 June 2018, the opponent filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 23 August 2018.

7. The applicant did not file any response.

8. By decision of 9 April 2019, the Board suspended the appeal proceedings and referred the case back to the Examination Division for further consideration regarding the registrability of the EUTM application. The Board had serious doubts about the registrability of the EUTM application for the following reasons:

• The EUTM application is descriptive for the goods claimed according to Article 7(1)(c) EUTMR.

• The Italian expression ‘la compostabile’ means ‘the compostable’. The term ‘LA COMPOSTABILE’ will be immediately understood by the Italian-speaking public as describing a specific characteristic of the capsule (which in Italian is the feminine word la capsula) depicted above the word element, namely its compostable nature. The relevant public will perceive the sign as a reference to compostable capsules. The notion of compostability and thereby environmental friendliness is underlined by the depiction of a green shoot with two leaves on the right‑hand side of the capsule.

• In this meaning as ‘the compostable capsule’ the sign is descriptive for the goods ‘Coffee, teas and cocoa and substitutes therefor; Coffee in whole-bean form; Mixtures of coffee; Coffee capsules; Ground coffee’ in Class 30 as it either refers to the goods themselves (‘coffee capsules’ which are compostable) or the form of their packaging in compostable capsules (‘coffee, teas, cocoa and substitutes therefor; mixtures of coffee; ground coffee’).

• With regard to the goods ‘coffee bags’ in Class 30 the figurative element of a coffee capsule describes that the ‘coffee bags’ are used for coffee or more precisely for brewing coffee. The figurative element of a green shoot with two leaves together with the word element ‘LA COMPOSTABILE’ refers to the compostable nature of the ‘coffee bags’. It serves to highlight the environmental friendliness of the marked products.

• The graphic elements do not have a sufficient impact on the overall impression of the contested mark as a whole to distract the attention of the relevant public from the descriptive meaning of the word element, thereby overcoming the absolute ground of refusal under Article 7(1)(c) EUTMR. On the contrary, the graphic elements reinforce the descriptive meaning and they do not depart significantly from the common representation of a capsule and a green shoot.

• Moreover, the sign lacks the required distinctiveness according to Article 7(1)(b) EUTMR.

9. The Examination Division refused to reopen the examination on absolute grounds. Therefore, on 1 July 2019 the Board lifted the suspension of the appeal proceedings.

Submissions and arguments of the parties

10. The arguments raised by the opponent in the statement of grounds may be summarised as follows:

• The Opposition Division incorrectly held that there are no elements in the contested sign that could be considered clearly more dominant than other elements. The verbal element ‘LA COMPOSTABILE’ is descriptive in the entire EU and not only in the Italian-speaking part. It will also be perceived by the English‑speaking part of the public and the public having a basic knowledge of English, as ‘the compostable’. The Italian wording is so close and similar to its English counterpart and meaning that it will be easily understood by the English‑speaking public. The Polish translation of 'LA COMPOSTABILE' is 'KOMPOSTOWALNY'. This translation is also so close that the Polish consumer will understand that ‘LA COMPOSTABILE’ relates to ‘the compostable’. The verbal element of the contested sign is, therefore, purely descriptive for the contested goods in the whole EU. The leaves and the capsule are the dominant elements of the contested sign.

• The figurative element is also descriptive, but only as far as the capsule is concerned. The stem and leaves, although they might be considered as somehow symbolic or associative towards either organic products or environmentally friendly applications, require some interpretation and speculation by the public to be seen in this way. Therefore, this element (as such) is certainly not entirely descriptive for compostable capsules, but a creative, non-descriptive and even striking element in the earlier trade mark.

• It is clear at a single glance, that the signs in conflict are visually similar to at least a medium degree, especially taking into account the dominant element, i.e. the green stem with two leaves. The dissimilarities are not enough to counteract their similarities.

• The concept of a capsule with a circular green stem and two leaves is original. Contrary to the findings of the Opposition Division, the signs are conceptually identical.

• The opponent agrees with the Opposition Division’s findings on the comparison of the goods and the relevant public.

• Contrary to the Opposition Division’s findings, in the present case the earlier marks as a whole have an average degree of (inherent) distinctive character. A trade mark consisting of a capsule and a green stem with two leaves cannot be considered to be entirely devoid of any distinctive character.

• The opponent is the only player on the market of compostable coffee cups [sic] with a logo that consists of a capsule with a green stem and two leaves. Consumers looking for their brand of compostable coffee capsules are used to identifying their brand of coffee by the look of the trade marks on the packaging. The earlier marks enjoy a certain degree of distinctiveness on the relevant market. As can be seen in Annex 1 the earlier rights are depicted on every packaging of the opponent’s capsules.

• The average consumer will look at the supermarket shelf for the dominant and outstanding element of the green stem with two leaves to identify his favourite product (at a glance). This is exactly what the applicant hopes to profit from. Taking into account the identical and highly similar goods, and the average consumer’s attention, the differences between the trade marks under conflict are insufficient to avoid a likelihood of confusion.

Reasons

11. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

12. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible. It is, however, not well-founded since the Opposition Division correctly rejected the opposition in its entirety (04/03/2015, T‑558/13, FSA K-FORCE, EU:T:2015:135, § 56; 19/11/2014, T–138/13, VISCOTECH, EU:T:2014:973, § 79-82; 22/05/2012, T‑60/11, Suisse Premium, EU:T:2012:252, § 59; 13/06/2018, R 2195/2017-2, Device of two overlapped squares (fig.) / device of two overlapped squares, § 48-51; 24/07/2013, R 1564/2012-4, device of a heart (fig.) / device of a heart (fig.), § 24).

Article 8(1)(b) EUTMR

13. According to Article 8(1)(b) EUTMR, the trade mark applied for shall not be registered if, because of its identity with, or similarity to, an earlier trade mark, and the identity or similarity of the goods or services covered by the two 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.

14. The risk that the public might 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 within the meaning of that article (11/11/1997, C–251/95, Sabèl, EU:C:1997:528, § 16-18; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 30).

15. Likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C–251/95, Sabèl, EU:C:1997:528, § 22; 29/09/1998, C–39/97, Canon, EU:C:1998:442, § 16; 22/06/1999, C–342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18).

International Registration designating the EU No 1 315 341

16. The opposition is first examined in so far as it is based on the earlier International Registration designating the EU No 1 315 341 for the figurative sign .

Relevant public

17. The average consumer is deemed to be reasonably well-informed and reasonably observant and circumspect (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17-26). It should, however, be recalled that the average consumer’s level of attention is likely to vary according to the category of goods and services in question (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 42 and the case-law cited therein) and that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his/her trust in the imperfect picture of them that he/she has kept in his/her mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T‑186/02, Dieselit, EU:T:2004:197, § 38).

18. For the reasons set out correctly by the Opposition Division, the relevant public consists of the public at large with an average degree of attention. The relevant territory is the EU. None of the parties has attacked the respective findings in the contested decision.

Comparison of the conflicting goods and services

19. Article 8(1)(b) EUTMR provides that the likelihood of confusion presupposes that the goods or services covered are identical or similar. Therefore, in all cases it is necessary to consider the degree of similarity between the goods or services covered. In relation to the assessment of the similarity of goods or services the following factors, inter alia, should be taken into account: their nature, their purpose and their method of use and whether they are in competition with each other or are complementary (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 28). Further factors include the usual origin of the goods, the pertinent distribution channels (in particular sales outlets) and the relevant public.

20. For the reasons correctly set out by the Opposition Division, the contested goods ‘teas and cocoa; coffee and substitutes therefor; coffee in whole-bean form; mixtures of coffee; coffee bags; coffee capsules; ground coffee’ in Class 30 are identical to the earlier mark’s goods in Class 30. The Opposition Division also rightly held the contested goods ‘substitutes for teas and cocoa’ in Class 30 to be highly similar to the opponent’s goods ‘tea; cocoa’ in Class 30. Neither of the parties has contested these findings.

Comparison of the contested trade mark with the earlier trade mark

21. Conflicting trade marks have to be compared via a global appreciation of the visual, aural or conceptual similarity between them bearing in mind, in particular, their distinctive and dominant components (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).

22. It should be borne in mind that, according to the case-law, 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. 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. That could be the case, in particular, where that component is capable alone of dominating the image of that mark which members of the relevant public keep in their minds, such that all the other components are negligible in the overall impression created by that mark (20/09/2007, C‑193/06 P, Quicky, EU:C:2007:539, § 42-43).

23. The assessment of a likelihood of confusion between the conflicting marks involves a comparative balance of similarities and differences, the weighing up of which depends on the distinctiveness of each of the elements. The less distinctive they are, the less weight they should be given. On the other hand, the more distinctive the elements of the marks are, the greater weight they should be given since the greater distinctiveness of the earlier mark is a factor aggravating the likelihood of confusion. Thus trade marks with a highly distinctive character either per se or because of the recognition they possess on the market, enjoy broader protection than trade marks with a less distinctive character (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23-24).

24. The contested figurative mark consists of the word element ‘LA COMPOSTABILE’ meaning ‘the compostable’ written in black, slightly stylized capital letters. On top of the word element a black capsule with a white reflected light is depicted. The bottom of the capsule points upwards and the capsule leans slightly to the right. On the right side of the capsule, there is the depiction of a stylized green shoot bending around the capsule and finishing in two green leaves, one of them pointing to the right and the other, slightly smaller one pointing to the left.

25. The earlier sign is a purely figurative mark consisting of a stylized depiction of a white capsule limited in its upper part by a thin black line and in its bottom part by a circular green line. At the right end of the sign, there are two green leaves. Both of the leaves lean to the right. The leaf that is further to the right is slightly smaller than the other one. The capsule is shown in an upright position with its bottom part pointing downwards.

26. The standard depiction of a capsule is descriptive for the conflicting goods at hand. It either refers to the goods themselves (‘coffee capsules’) or the form of their packaging (‘coffee, teas, cocoa and substitutes therefor; mixtures of coffee; ground coffee’). The goods ‘coffee bags’ can contain coffee capsules and ‘coffee in whole-bean form’ can be ground and subsequently packaged in capsules. Therefore, the depiction of a capsule also describes characteristics of these products, namely their content (regarding ‘coffee bags’) or the use to which they will be put (regarding ‘coffee in whole-bean form’ which can serve as an ingredient for capsules). Due to the generally descriptive and non-distinctive nature of the depicted objects, the figurative elements in both signs can be only protected in so far as they depart from a standard depiction of a capsule. Only these specific features can be given protection and only, these features, matter, therefore, in the comparison of the signs.

27. The standard depiction of a green shoot or two green leaves with a green line is also in itself descriptive and non-distinctive for the goods at issue. It will be understood by the relevant consumers as a reference to either the natural or ecological origin of the ingredients of the products or to their environmentally friendly qualities, e.g. their compostability. In order to avoid the depiction of a green shoot or two green leaves with a green line being monopolized despite its descriptive and non-distinctive character for the goods at hand, it cannot be given much weight in the comparison of the signs. For the comparison of the signs attention can be paid only to the particular features of the depiction differentiating it from a standard depiction.

28. The word element ‘LA COMPOSTABILE’ in the contested sign is also descriptive and non-distinctive for the relevant part of the public which understands its meaning as ‘the compostable’ (in particular the Italian-speaking part of the relevant public). In this meaning, the word element refers to the compostability of the marked goods. For environmentally conscious consumers this is an essential feature because coffee capsules and comparable products are controversial especially due to the amount of waste they cause. The conflicting signs are the most similar for the part of the relevant public who understands the meaning of the word element ‘LA COMPOSTABILE’ since for those consumers the word element only reinforces the meaning of the figurative elements. Since the part of the relevant public who understands the meaning of ‘LA COMPOSTABILE’ is the part of the public that will be the most likely to be confused, the following examination focuses only on those consumers.

29. For the reasons correctly set out by the Opposition Division, the conflicting signs are visually similar only to a low degree. They coincide in the representation of a capsule and a green shoot or respectively two green leaves with a green line. However, since the standard depiction of a capsule as well as the standard depiction of a shoot or two leaves with a line are in itself descriptive and non-distinctive for the goods at hand, only the special features of the depictions departing from a standard depiction are relevant for the comparison. Those specific features differ significantly in both signs. The figurative elements in both signs create a significantly different impression on the relevant public. As the Opposition Division correctly pointed out the green parts in the earlier mark will be perceived visually as a component forming part of the capsule itself, namely the lid, with separate leaves on the side. By contrast, in the contested mark the green elements form a separate object next to the capsule. There are also important differences in the depictions of the capsule in both signs. The capsule in the earlier mark is white. It stands on its bottom part and gives mainly a static impression. The capsule in the contested mark, on the contrary, is black and it is depicted upside down leaning slightly to the right. It creates a much more dynamic impression than the one in the earlier mark. Moreover, the word element ‘LA COMPOSTABILE’ in the contested sign which has no counterpart in the purely figurative earlier mark represents a significant difference between the two marks even for the part of the public who understands its meaning. Despite the descriptive meaning of the word element ‘LA COMPOSTABILE’ for part of the relevant public, these consumers will still pay attention to it for the following reasons: The descriptive or weak distinctive character of an element of a complex mark does not necessarily imply that that component cannot constitute a significant or even dominant element since – because, in particular, of its position in the sign or its size – it may make an impression on consumers and be remembered by them (12/11/2008, T‑7/04, Limoncello, EU:T:2008:481, § 44). Since consumers usually refer to marks by their word elements and not by a description of their figurative elements, the most distinctive element in the contested sign is the word element ‘LA COMPOSTABILE’ even for the consumers that understand its descriptive meaning. This is even truer given the fact that the depiction of a capsule and a green shoot in the contested sign are generally also descriptive for the goods at issue and might only have a low degree of distinctiveness due to their special features departing from a standard depiction.

30. To sum up, the conflicting signs coincide only in a weak element, namely the depiction of a capsule and shoot or respectively two green leaves with a line. They show, however, significant differences in the concrete graphical depiction of the same objects which are per se descriptive of the conflicting goods. Moreover, in contrast to the earlier mark, the contested mark contains the word element ‘LA COMPOSTABILE’ which – although being descriptive of the goods at issue for part of the relevant public – still represents the most distinctive element in the contested sign. Therefore, the conflicting signs are visually similar only to a low degree.

31. As the earlier mark is purely figurative, an aural comparison is not possible.

32. Conceptually, both signs refer to nature and capsules. For the part of the relevant public that understands the meaning of the word element ‘LA COMPOSTABILE’ the contested sign is, however, much more specific than the earlier mark. The contested mark refers to the concept of compostable capsules. The earlier mark, by contrast, does not further explain which connection the capsules have with nature. It could also be that the green leaves refer to the natural qualities of the coffee, tea, cocoa etc. inside the capsules or the fact that the capsules are produced in an environmentally friendly way e.g. by using less energy. In any case, even if the concept conveyed by both marks were the same, the degree of conceptual similarity would still be low. This is due to the fact that the coincidence concerns descriptive and non-distinctive concepts for the goods at issue.

Distinctiveness of the earlier mark

33. In determining the degree of distinctive character of a trade mark, an overall assessment has to be made of the greater or lesser capacity to identify the goods for which it has been registered as coming from a particular undertaking. Account should be taken of the inherent characteristics of the mark, including the fact that it does or does not contain an element that is descriptive of the goods for which it has been registered and other criteria; in particular, how intensive, geographically widespread and long-standing the use of the mark has been (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22-23).

34. The Opposition Division correctly found the inherent distinctiveness of the earlier sign to be low. The objects depicted in the earlier sign, namely the capsule and the green leaves with the line, are generally descriptive and non-distinctive for the goods at issue. The earlier sign was only registered due to the particular features of the depicted objects which deviate from a standard depiction.

Likelihood of confusion

35. The risk that the public might 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 within the meaning of Article 8(1)(b) EUTMR (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16‑18; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 30).

36. The essential function of a trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from those of others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 28; see also seventh recital of the EUTMR). Besides that function of origin, the trade mark can perform other functions.

37. The appreciation of the likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified (seventh recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

38. Such a global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

39. Despite the fact that the conflicting goods are partly identical and partly highly similar, there is no likelihood of confusion (04/03/2015, T‑558/13, FSA K-FORCE, EU:T:2015:135, § 56; 19/11/2014, T–138/13, VISCOTECH, EU:T:2014:973, § 79-82; 22/05/2012, T‑60/11, Suisse Premium, EU:T:2012:252, § 59; 13/06/2018, R 2195/2017-2, Device of two overlapped squares (fig.) / device of two overlapped squares, § 48-51; 24/07/2013, R 1564/2012-4, device of a heart (fig.) / device of a heart (fig.), § 24). The relevant public shows a normal degree of attention and the conflicting signs are only lowly similar. Taking into account the principle of interdependence the low similarity of the signs offsets the identity or high similarity of the conflicting goods. However, a likelihood of confusion cannot be based on the mere fact that both marks contain a depiction of a capsule and two green leaves with a line. The objects depicted are descriptive for the goods at issue. Moreover, the specific depictions of the same objects show significant differences in the conflicting signs. Finally, although being descriptive for part of the relevant public, the word element ‘LA COMPOSTABILE’ which has no counterpart in the earlier mark still represents a noticeable difference between the signs. Taken as a whole, the signs create a sufficient different impression to avoid any likelihood of confusion. The dissimilarities between the signs outweigh their similarities.

Earlier Benelux trade mark registration No 983 375

40. Since the earlier Benelux trade mark registration No 983 375 is identical to the earlier international registration No 1 315 341 and registered for the same goods and services, the opposition must be rejected also in so far as this mark is concerned. The same reasoning applies as for international registration No 1 315 341.

Costs

41. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the opponent, as the losing party, must bear the applicant’s costs of the opposition and appeal proceedings.

42. With regard to the appeal proceedings, these costs consist of the applicant’s costs of professional representation in the amount of EUR 550.

43. As to the opposition proceedings, the Opposition Division ordered the opponent to bear the applicant’s representation costs which were fixed at EUR 300. This decision remains unaffected. The total amount for both proceedings is therefore EUR 850.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the opponent to pay EUR 550 for the applicant’s costs in the appeal proceedings. The total amount to be paid by the opponent in the opposition and appeal proceedings is EUR 850.

Signed S. Stürmann

Signed S. Martin

Signed A. Szanyi Felkl

Registrar: Signed H.Dijkema