21 May 2018Trademarks

EU General Court confirms confusion between coffee TMs

The EU General Court has ruled that trademark applications for ‘teaespresso’ and ‘tèespresso’ are both too similar to earlier marks for ‘Tpresso’.

It issued two separate but related rulings ( here and here) on Friday, May 18.

In December 2014, Italytrade, a company based in Bari, Italy, applied to register ‘teaespresso’ and ‘tèespresso’ as EU trademarks at the European Union Intellectual Property Office (EUIPO). The marks were filed under class 30, covering coffee, teas and cocoa, and substitutes for them.

Tpresso, based in Zürich, Switzerland, later filed oppositions against the marks based on two international registrations for ‘Tpresso’, one word mark and one figurative mark, which cite classes 11 and 30. Among the goods and services covered are “machines for the preparation of hot beverages” and “non-medicinal infusions and teas in the form of capsules”.

The EUIPO’s Opposition Division upheld the oppositions in separate decisions, prompting Italytrade to appeal.

However, the EUIPO’s Fourth Board of Appeal dismissed the appeals. It gave several reasons for its decisions, including that in the ‘teaespresso’ case, the signs at issue are highly similar or even identical phonetically. With ‘tèespresso’, the board said the signs were highly similar phonetically.

The board therefore found there was a likelihood of confusion with ‘Tpresso’ in both cases.

Italytrade appealed to the General Court, but the court ruled in both cases that the board correctly found that there would be a likelihood of confusion on the part of the average consumer, and dismissed the actions.

The court said that because the goods at issue are generally sold in stores, visual similarity between the marks may be more important than phonetic similarity in assessing likelihood of confusion.

“However, the applicant errs … when it deduces that, consequently, the phonetic aspect is of only little relevance, or even irrelevant, in that context.

“Moreover, the applicant’s argument is based on the incorrect premise that the signs at issue are visually different, since … there is at least an average degree of visual similarity between them. The applicant’s argument must therefore, in any event, be rejected,” the court said.

The court dismissed the actions and ordered Italytrade to pay costs.

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