Author: Ardine Siepman (Novagraaf)
Date of publication: 11/06/2018
The holder of the word and figurative mark ‘Tpresso’ sought to prevent the registration of the word mark ‘teaespresso’, on the grounds of likelihood of confusion. Both cover similar tea-related products. Ardine Siepman examines the recent EU General Court ruling.
Likelihood of confusion is a key criteria when assessing the registrability of a trademark in the context of an earlier registered right. To establish whether there is likelihood of confusion, the visual, phonetic and conceptual similarity will be assessed as well as the goods and/or services involved. The decision will be based on the overall impression given by those marks; account being taken, in particular, of their distinctive and dominant components. A low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa.
In the case of ‘teaespresso’, EUIPO’s Opposition Division agreed with Tpresso’s argument that the proposed teaespresso mark was confusing similar, both visually and phonetically, as well as in respect to the goods for which protection was sought. On appeal, EUIPO’s Board of Appeal (BoA) upheld the ruling, finding (in short) that the signs both had significant visual and phonetic similarities and that the respective goods were in part identical and in part similar, and thus likely to cause confusion to the relevant public (in this case, the general public in the EU).
Italytrade SRL, owner of the teaespresso brand, further contested the BoA decision at the EU General Court. However, in its 18 May 2018 judgment, the EU General Court confirmed EUIPO’s earlier decisions.
Findings of the General Court
On appeal, Italytrade SRL argued that there was significant visual and phonetic differences to differentiate the two marks. It also argued that conceptually, the mark applied for had specific meaning within the EU, as it evokes the concepts of ‘tea’ and ‘espresso’. In contrast, the word element ‘Tpresso’ is fanciful and does not have any connection with tea or Italian coffee, according to its appeal.
Nonetheless, the EU General Court EU ruled in favour of the holder of the earlier mark Tpresso. In particular, it found there to be:
- Visual similarity: The signs at issue have the same structure, as they consist of a single word element, and both have the letter ‘t’ at the beginning and the same ending, namely the group of six letters ‘presso’. This is the same for the figurative mark. In addition, all the letters making up the word element of Tpresso mark are included in the ‘teaespresso’ and also in the same position.
- Phonetic similarity: The pronunciation of the beginning of both marks – ‘tea’ and the letter ‘t’ – are very similar for a large section of EU consumers; similarly, the ending of the signs at issue (‘presso’) will be pronounced in the same way by the relevant public.
- Conceptual similarity: Here, the Court observed that, there is an average degree of conceptual similarity between the signs due to the fact the consumer will likely recognise the word ‘espresso’ in the signs at issue.
Finally, due to the fact that the goods at issue are generally sold in stores, the EU General Court observed that the visual similarity between the marks may be more important than phonetic similarity in establishing likelihood of confusion.
As a result, the EU General Court dismissed the appeal in its entirety, finding there to be likelihood of confusion between the earlier trademark and the trademark applied for.