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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Biif v EUIPO - Eddies Pizza (Caprizza) (EU trade mark - Judgment) [2025] EUECJ T-187/24 (12 February 2025) URL: http://www.bailii.org/eu/cases/EUECJ/2025/T18724.html Cite as: ECLI:EU:T:2025:147, EU:T:2025:147, [2025] EUECJ T-187/24 |
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JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
12 February 2025 (*)
( EU trade mark - Opposition proceedings - Application for the EU figurative mark CAPRIZZA - Earlier EU figurative mark capizzi GASTROPIZZA - Relative ground for refusal - Likelihood of confusion - Similarity of the services - Similarity of the signs - Article 8(1)(b) of Regulation (EU) 2017/1001 )
In Case T‑187/24,
Biif Srl, established in Bergamo (Italy), represented by F. Musella, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Eddies Pizza, SL, established in Palafrugell (Spain),
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, E. Buttigieg and G. Hesse (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the 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
1 By its action under Article 263 TFEU, the applicant, Biif Srl, seeks the annulment and variation of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 9 February 2024 (Case R 1077/2023-1) (‘the contested decision’).
Background to the dispute
2 On 22 March 2021, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The mark applied for covered, inter alia, services in Class 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, corresponding to the following description: ‘Providing temporary accommodation; services for providing food and drink; rental of furniture, linens, table settings, and equipment for the provision of food and drink; temporary accommodation information, advice and reservation services; information, advice and reservation services for the provision of food and drink; boarding for animals; pizza parlors; serving food and drinks; food and drink catering; bar services; cafeteria services’.
4 On 30 July 2021, the other party to the proceedings before the Board of Appeal, Eddies Pizza, SL, filed a notice of opposition to registration of the mark applied for in respect of the services in Class 43 referred to in paragraph 3 above.
5 The opposition was based on the following earlier EU figurative mark:
6 The earlier mark covered services in Classes 39 and 43, corresponding, for each of those classes, to the following description:
– Class 39: ‘Food delivery services; food delivery services; frozen food storage services; delivery of food by restaurants; food delivery services; packing of food; delivery of hampers containing food and drink; packing of food; food storage services; none of the aforesaid services including alcoholic beverages’;
– Class 43: ‘Services for providing food and drink; food preparation services; catering; catering services for the provision of food; reporting services, advise and reservation, in relation to the following fields, catering; food preparation services; catering; none of the aforesaid services including alcoholic beverages’.
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
8 On 23 March 2023, the Opposition Division partially upheld the opposition. It upheld the opposition in respect of all services in Class 43 referred to in paragraph 3 above, except for ‘Boarding for animals’ in respect of which it rejected the opposition.
9 On 24 May 2023, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision.
10 By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was a likelihood of confusion, on the part of the relevant Spanish-speaking public in the European Union, within the meaning of Article 8(1)(b) of Regulation 2017/1001.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– reject the opposition in its entirety;
– order EUIPO and Eddies Pizza to pay the costs relating to both levels of proceedings.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
Law
13 In support of its action, the applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001 and, second, infringement of Article 94(1) of that regulation.
The first plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
14 By its first plea in law, the applicant submits that the Board of Appeal’s conclusion that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 is incorrect.
15 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not 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.
16 The risk that the public may believe that the goods or services in question come from the same undertaking or 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 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 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 and services in question in that territory. However, it must be borne in mind that, for an EU 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 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
The relevant public and its level of attention
18 The Board of Appeal found, in paragraph 25 of the contested decision, that the relevant public consisted of the general public and business customers with professional knowledge or expertise and that the level of attention of that public was average. Furthermore, having noted that the signs at issue, in particular the earlier mark, might be meaningful for the Italian-speaking public, that Board of Appeal stated, in paragraph 24 of that decision, that, like the Opposition Division, it would also assess the likelihood of confusion on the part of the relevant public which had no knowledge of the Italian language, such as the Spanish-speaking public in the European Union.
19 In that regard, it should be stated that, although the applicant does not dispute the Board of Appeal’s finding that the relevant public consists of the general public and business customers, it nevertheless submits that the level of attention of the average consumer is likely to differ according to the category of goods or services at issue.
20 However, it is sufficient to find that the applicant’s argument is not substantiated in any way, with the result that it fails to call into question the Board of Appeal’s finding concerning the level of attention of the relevant public.
The comparison of the services
21 In paragraphs 29 to 33 of the contested decision, the Board of Appeal found that the services covered by the mark applied for, included in Class 43, were either identical, or similar to an average or low degree, to the services covered by the earlier mark, also included in Class 43. In order to reach that conclusion, it carried out a detailed comparison, service by service or category of services by category of services, of the services claimed by the signs at issue.
22 The applicant submits that there are clear differences between the services covered by the signs at issue.
23 According to the applicant, in particular, the services of ‘Providing temporary accommodation; rental of furniture, linens, table settings, and equipment for the provision of food and drink; temporary accommodation information, advice and reservation services; information, advice and reservation services for the provision of food and drink’ are completely different from the services covered by the earlier mark.
24 The applicant also submits that the fact that ‘alcoholic beverages’ are excluded from the list of services covered by the earlier mark changes the nature of those services, since, for example, a restaurant generally provides alcoholic beverages, with the result that the services in question have only a very low degree of similarity with the services covered by the mark applied for.
25 Lastly, the applicant stresses that the services covered by the mark applied for are completely different from the services included in Class 39, covered by the earlier mark.
26 EUIPO disputes the applicant’s arguments.
27 In assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
28 In the present case, it must be found that the applicant merely asserts that the services included in Class 43 claimed by each of the signs at issue are completely different, without disputing the detailed assessment carried out by the Board of Appeal, service by service, in paragraphs 30 to 33 of the contested decision, or putting forward any relevant arguments or evidence in support of such an assertion.
29 The applicant merely argues, in essence, that the fact that the services claimed by the signs at issue are included in the same class of the Nice Classification, namely Class 43, is not sufficient to establish that they are similar. Such a contention, although consistent with Article 33(7) of Regulation 2017/1001, cannot, however, call into question the Board of Appeal’s conclusion that those services are identical or similar, since that Board of Appeal reached that conclusion not on the basis that the services claimed by each of the signs at issue belonged to the same class, but on the basis of a detailed analysis of those services, their nature, public, providers and distribution channels.
30 Furthermore, the applicant’s argument that the services covered by the mark applied for, which are all included in Class 43, are dissimilar to the services included in Class 39 covered by the earlier mark is ineffective, since it was only in relation to the services in Class 43, covered by the earlier mark, that the Board of Appeal compared the services covered by the mark applied for.
31 As regards the applicant’s argument that the exclusion of ‘alcoholic beverages’ from the list of services covered by the earlier mark means that those services have only a very low degree of similarity with the services covered by the mark applied for, that argument cannot succeed. Since alcoholic beverages are only one of the numerous products whose preparation and supply, in particular, are the subject of the services claimed by the signs at issue, their exclusion from the services covered by the earlier mark is not sufficient to show that those services are only similar to a very low degree to the services covered by the mark applied for. Furthermore, the applicant does not argue and, a fortiori, does not demonstrate that the services for the supply and preparation of non-alcoholic beverages are not intended for the same public and do not have the same providers or the same distribution channels as the services for the supply and preparation of alcoholic beverages or other foods.
32 The Board of Appeal therefore did not make an error of assessment in finding, in paragraphs 29 to 33 of the contested decision, that the services included in Class 43, claimed by the signs at issue, were either identical or similar to an average or low degree.
The comparison of the signs
33 As regards the mark applied for, the Board of Appeal found, in paragraph 37 of the contested decision, that part of the relevant public would break down that mark into two elements, ‘capri’ and ‘pizza’, and that that part of that public would understand the first term as designating the island of the same name, which is located in the Gulf of Naples, and the second term as designating a culinary preparation, sweet or savoury, based on wheat flour; accordingly, for that part of the relevant public, the word element ‘caprizza’ would have a distinctive character slightly below average. As for the figurative elements of the mark applied for, according to the Board of Appeal, they would be perceived as merely decorative elements, with a weak distinctive character.
34 As regards the earlier mark, the Board of Appeal noted, in paragraph 41 of the contested decision, that the Spanish-speaking average consumer in the European Union would generally understand the term ‘capizzi’ as a fanciful term. The Board of Appeal stated, in paragraphs 39 and 42 of that decision, that it would disregard the eventual minority of the relevant Spanish-speaking public which, like the relevant Italian-speaking public, might recognise in the term ‘capizzi’ either the municipality of the same name in the Metropolitan City of Messina (Italy) or an Italian surname. The Board of Appeal then found, in paragraphs 43 and 44 of the contested decision, that, in view of its size and position, the element ‘capizzi’ was the dominant element of the earlier mark and that it had a normal degree of distinctiveness, whereas the element ‘gastropizza’ would be perceived as a variation of the Spanish term ‘gastrobar’, that is to say, as designating, in essence, a gastronomic restaurant offering pizzas, and that it had a weak distinctive character. As regards the figurative elements of the earlier mark, according to the Board of Appeal, they would be perceived as merely decorative elements, with a weak distinctive character.
35 Based on the considerations set out in paragraphs 33 and 34 above, the Board of Appeal found, in paragraphs 45, 49 and 50 of the contested decision, that the signs at issue were visually similar to an average degree and phonetically similar to a high degree and that those signs had, for a part of the relevant public, some conceptual similarity, albeit of low impact.
36 The applicant does not challenge the Board of Appeal’s findings concerning the dominant element of the earlier mark and the distinctive character of the various elements making up the signs at issue. By contrast, it disputes that Board of Appeal’s conclusions concerning the visual, phonetic and conceptual comparison of those signs.
37 EUIPO disputes the applicant’s arguments.
38 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, 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 engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
– The visual comparison
39 In paragraph 45 of the contested decision, the Board of Appeal found that the signs at issue were visually similar to an average degree. According to the Board of Appeal, those signs have the groups of letters ‘cap’ and ‘izz’ in common, namely six out of the seven letters which make up the dominant word element of the earlier mark, and six out of the eight letters of the mark applied for. Furthermore, in the Board of Appeal’s view, the differences consisting of the respective final letter of the signs at issue, namely ‘a’ and ‘i’, and of the middle letter of the mark applied for, namely ‘r’, are likely to go unnoticed, since most of the letters of the mark applied for coincide with the dominant element of the earlier mark and consumers typically tend to concentrate on the beginning of a sign. Lastly, according to the Board of Appeal, the differences resulting from the secondary element of the earlier mark, namely ‘gastropizza’, and from the figurative elements of the two signs have less impact.
40 The applicant maintains that the signs at issue are not visually identical or similar.
41 In that regard, the applicant submits that those signs differ in their respective final letter, namely ‘a’ and ‘i’, and in the middle letter of the mark applied for, namely ‘r’. It also argues that those signs differ in their graphic elements. The earlier mark consists of two elements in black characters, with a triangle-shaped dot on each ‘i’, whereas the mark applied for is red in colour, with a blue dot on the ‘i’ and a final ‘a’ that stretches to form an underlying tail. Furthermore, the font used for each of the signs at issue is completely different. The applicant infers from this that the Board of Appeal did not take into account the fact that the presence of figurative elements may lead to the overall impression produced by each sign being different.
42 EUIPO disputes the applicant’s arguments.
43 As a preliminary point, it must be stated that, as maintained by EUIPO, in essence, the applicant cannot usefully argue that the signs at issue are not visually identical, since, in paragraph 45 of the contested decision, the Board of Appeal did not find that those signs were identical, but that they had an average degree of visual similarity.
44 As regards the similarity of those signs, it should be found that while it is true that the word elements ‘caprizza’ and ‘capizzi’ differ in their respective final letter, namely ‘a’ for the mark applied for and ‘i’ for the earlier mark, and also in the middle letter of the mark applied for, which is an ‘r’, the fact remains that, as noted by the Board of Appeal in paragraph 45 of the contested decision, those elements have six letters in common, namely the groups of letters ‘cap’ and ‘izz’, out of the eight letters which make up the mark applied for and the seven letters which make up the dominant element of the earlier mark.
45 It should also be found that although the fonts used for each of those signs differ, neither font is particularly original. Likewise, the underlying tail in the mark applied for is not particularly original.
46 Lastly, as regards the element ‘gastropizza’ of the earlier mark, it is represented in a smaller font size than the element ‘capizzi’ and is placed below it. As stated in paragraph 36 above, the applicant does not, moreover, dispute the Board of Appeal’s finding, set out in paragraphs 43 and 46 of the contested decision, that, taking into account in particular its size and position, the element ‘capizzi’ is the dominant element of the earlier mark and the element ‘gastropizza’ is only secondary.
47 Therefore, the Board of Appeal did not make an error of assessment in finding, in paragraph 48 of the contested decision, that the figurative elements of the signs at issue and the word element ‘gastropizza’ of the earlier mark had less impact than the groups of letters common to those signs, referred to in paragraph 44 above.
48 Accordingly, the applicant is wrong to argue, in essence, that it follows from the figurative elements of the signs at issue that the overall impression produced by each of those signs is different and, consequently, that those signs are not visually similar, notwithstanding the fact that those signs are of different colours.
49 The Board of Appeal therefore correctly concluded, in paragraph 45 of the contested decision, that the signs at issue were visually similar to an average degree.
– The phonetic comparison
50 In paragraph 49 of the contested decision, the Board of Appeal found that the signs at issue were phonetically similar to a high degree. According to the Board of Appeal, those signs have the same number of syllables and the same first syllable, namely ‘ca’. Furthermore, in the Board of Appeal’s view, the second syllables of the signs at issue, namely ‘pri’ and ‘pi’, and their third and last syllables, namely ‘tsa’ and ‘tsi’, are highly similar. In the Board of Appeal’s view, the signs at issue differ in their respective final vowel, namely ‘a’ and ‘i’, in the middle letter ‘r’ of the mark applied for and in the secondary element ‘gastropizza’ of the earlier mark, which might, due to its size and descriptive character, not be pronounced by the relevant public.
51 The applicant maintains that the signs at issue have a very low degree of phonetic similarity. In that regard, it argues that, although the signs at issue have the groups of letters ‘cap’ and ‘izz’ in common, they differ in the consonant ‘r’ of the mark applied for and in their respective final vowel, namely ‘a’ and ‘i’. Those signs therefore have a different length, rhythm and intonation. Furthermore, the mark applied for consists of two elements, ‘capri’ and ‘pizza’. Lastly, the phonetic aspect is of little relevance as regards restaurant services, since consumers read the signs before entering any establishment.
52 EUIPO disputes the applicant’s arguments.
53 It must be found that the circumstance, noted moreover by the Board of Appeal in paragraph 49 of the contested decision, that the signs at issue differ in their respective final vowel and the middle letter ‘r’ of the mark applied for cannot offset the fact that those signs both have three syllables and that they both include the groups of letters ‘cap’ and ‘izz’.
54 Furthermore, the applicant does not dispute the Board of Appeal’s finding, in that same paragraph 49, that the element ‘gastropizza’ of the earlier mark might not be pronounced by the relevant public. In any event, it has been held that, in order to economise on words, the relevant public will tend not to pronounce elements with a weak distinctive character (judgment of 10 January 2024, Levantur v EUIPO – Fantasia Hotels & Resorts (LUXURY BAHIA PRINCIPE FANTASIA Don Pablo Collection), T‑505/22, not published, EU:T:2024:3, paragraph 119). In the present case, the element ‘gastropizza’ is weakly distinctive and secondary in the overall impression produced by the earlier mark.
55 As regards the applicant’s argument that, in essence, in the case of restaurant services, consumers will tend to read signs rather than pronounce them, it is sufficient to recall that, as argued by EUIPO, marketing conditions are to be taken into account at the stage of the global assessment of the likelihood of confusion and not at that of the assessment of the similarity of the signs at issue (judgment of 12 June 2024, Marcinkowska-Dec v EUIPO – Ismailova (DESSI), T‑472/23, not published, EU:T:2024:374, paragraph 35).
56 The Board of Appeal did not, therefore, make an error of assessment in concluding, in paragraph 49 of the contested decision, that the signs at issue were phonetically similar to a high degree.
– The conceptual comparison
57 In paragraph 50 of the contested decision, the Board of Appeal found, in particular, that the signs at issue had some conceptual similarity for the part of the relevant Spanish-speaking public for which both signs might refer to a pizza. However, according to the Board of Appeal, in that situation the impact of such similarity would be low, given its reduced distinctiveness.
58 The applicant maintains that the signs at issue are conceptually dissimilar.
59 According to the applicant, the relevant public will break down the mark applied for into two terms, ‘capri’ and ‘pizza’, with the result that it will understand that mark as meaning ‘Capri’s pizza’ or ‘Caprese pizza’. By contrast, the earlier mark will be perceived either as a fanciful term, devoid of meaning, or as referring to the municipality of Capizzi (Italy) or to an Italian surname. It is, therefore, obvious that the earlier mark does not refer to the island of Capri (Italy). Consequently, according to the applicant, regardless of whether or not the earlier mark has a meaning, the signs at issue must be regarded as conceptually dissimilar.
60 Lastly, the applicant stresses that where the meaning of at least one of the two signs at issue is clear and precise, the conceptual differences found between those signs may neutralise the visual and phonetic similarities between them, as well as the identity or similarity of the goods and services at issue.
61 EUIPO disputes the applicant’s arguments.
62 As regards the part of the relevant Spanish-speaking public, which, as stated in paragraph 57 above, the Board of Appeal found might understand each of the signs at issue as referring to a pizza and for which, consequently, those signs would have some conceptual similarity, the following observations must be made.
63 In order to show that the signs at issue are conceptually dissimilar, the applicant does not dispute the meaning given to the mark applied for by the Board of Appeal, namely ‘Capri’s pizza’ or ‘Caprese pizza’. On the contrary, the applicant argues, on the basis of paragraph 111 of the judgment of 19 April 2016, 100 % Capri Italia v EUIPO – IN.PRO.DI (100 % Capri) (T‑198/14, not published, EU:T:2016:222) – which states that ‘the word “capri” will be understood … by the average consumer of the [European] Union as evoking the island of the same name’ – that the mark applied for will be given the abovementioned meaning not only by part of the relevant Spanish-speaking public, as noted by the Board of Appeal, but by all average consumers in the European Union.
64 The applicant further submits that, unlike the mark applied for, the earlier mark does not refer to the island of Capri, since its element ‘capizzi’ will be perceived either as being meaningless or as referring to a municipality of the same name located in the Metropolitan City of Messina or to an Italian surname.
65 However, it should be borne in mind that the earlier mark includes another element, namely ‘gastropizza’. The applicant does not dispute the Board of Appeal’s finding, set out in paragraph 43 of the contested decision, that that element will be perceived as a variation of the Spanish term ‘gastrobar’, that is to say, as designating, in essence, a gastronomic restaurant offering pizzas.
66 It follows from the foregoing that at least part of the relevant Spanish-speaking public will understand both the mark applied for and the earlier mark as referring to a pizza because that part of that public will understand the former as meaning ‘Capri’s pizza’ or ‘Caprese pizza’ and the latter as designating a gastronomic restaurant offering pizzas.
67 Consequently, contrary to what the applicant claims, for that part of the relevant public, the signs at issue cannot be regarded as conceptually dissimilar. Admittedly, to the extent that the element ‘gastropizza’ is, as noted by the Board of Appeal in paragraphs 43 and 46 of the contested decision, a secondary element with weak distinctiveness, those signs cannot have, for the part of the relevant public in question, a high degree of conceptual similarity. The fact remains, however, that the latter will not perceive them as conceptually dissimilar.
68 As regards the other part of the relevant Spanish-speaking public, which would not give a ‘clear meaning’ to any of the signs at issue and for which, consequently, the conceptual comparison would remain neutral, it should be noted that, as recalled in paragraph 17 above, the finding of a likelihood of confusion for a non-negligible part of the relevant public is sufficient to uphold an opposition filed against an application for registration of an EU trade mark.
69 It must be stated that the applicant does not argue that the part of the relevant Spanish-speaking public which understands each of the signs at issue as referring to a pizza constitutes a negligible part of the relevant public.
70 Accordingly, it is sufficient to state that the Board of Appeal did not make an error of assessment in finding, in paragraph 50 of the contested decision, that, for a part of the relevant Spanish-speaking public, which would understand both the mark applied for and the earlier mark as referring to a pizza, the signs at issue had some conceptual similarity.
The distinctive character of the earlier mark
71 In paragraph 53 of the contested decision, the Board of Appeal found that the earlier mark had a normal distinctive character, despite the weak element ‘gastropizza’.
72 The applicant states that it does not dispute the Board of Appeal’s finding.
The global assessment of the likelihood of confusion
73 In paragraph 54 of the contested decision, the Board of Appeal noted that, first, the services covered by the signs at issue were identical or similar, second, those signs were visually similar to an average degree and phonetically highly similar, and, third, those signs were conceptually similar for at least part of the relevant public. The Board of Appeal also noted, in paragraph 55 of that decision, that the signs at issue coincided in the group of letters ‘cap’, which primarily caught the attention of that public, and in the group of letters ‘izz’, and that the differences resulting from the presence of the letters ‘r’ and ‘a’ or ‘i’, as well as from the stylisations, colours, and the element ‘gastropizza’ of the earlier mark, were not sufficient to exclude any likelihood of confusion. The Board of Appeal concluded, in paragraph 57 of that decision, that there was a likelihood of confusion on the part of the relevant Spanish-speaking public in the European Union.
74 The applicant maintains that there is no likelihood of confusion.
75 It stresses that even if the relevant public displays an average level of attention with regard to identical goods and services, the differences between the signs make it possible to exclude any likelihood of confusion. The signs at issue are not visually and phonetically similar, or are so at most to a very low degree. Furthermore, they are not conceptually similar. Accordingly, they are, overall, completely dissimilar.
76 Furthermore, the applicant claims that an element common to the signs at issue, such as the groups of letters ‘cap’ and ‘izz’, can give rise to a likelihood of confusion only if it plays an independent distinctive role in the contested sign. However, this is not so in the present case. Accordingly, rather than taking into account those letters, which are common to the signs at issue, it would be appropriate to assess those signs in their entirety.
77 EUIPO disputes the applicant’s arguments.
78 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
79 In the present case, it follows from paragraphs 32, 49, 56 and 70 above that, first, the services claimed by the signs at issue are either identical or similar to an average or low degree, second, the signs at issue are visually similar to an average degree and phonetically highly similar, while, third, those signs have some conceptual similarity for a non-negligible part of the relevant Spanish-speaking public which will understand both signs as referring to a pizza, and fourth, the earlier mark has a normal distinctive character.
80 Furthermore, with regard to the applicant’s argument referred to in paragraph 55 above, that the phonetic similarity of the signs at issue is of little relevance as regards restaurant services, it must be noted that those signs are also visually and conceptually similar.
81 Consequently, in the light of the factors listed in paragraph 79 above, there is a likelihood of confusion for the non-negligible part of the relevant Spanish-speaking public which will understand each of the signs at issue as referring to a pizza.
82 Since, in accordance with the case-law referred to in paragraph 17 above, the finding of a likelihood of confusion for a non-negligible part of the relevant public is sufficient to uphold an opposition, the first plea in law must be rejected.
The second plea in law, alleging infringement of Article 94(1) of Regulation 2017/1001
83 To the extent that the applicant maintains that the contested decision does not adequately state the reasons on which it is based, for the purposes of Article 94(1) of Regulation 2017/1001, it should be noted that, as argued by EUIPO, the arguments made by the applicant in support of the infringement of that provision are indistinguishable from its arguments on the merits of the Board of Appeal’s assessment of the existence of a likelihood of confusion. No infringement of the obligation to state reasons can, therefore, be found in that regard (see, to that effect, judgment of 12 May 2011, Région Nord-Pas-de-Calais and Communauté d’agglomération du Douaisis v Commission, T‑267/08 and T‑279/08, EU:T:2011:209, paragraph 45 and the case-law cited).
84 The obligation to state reasons is an essential procedural requirement which must be distinguished from the question whether the reasons given are correct, the latter being a matter going to the substantive legality of the contested measure. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, the latter will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect (see judgments of 22 September 2016, Pensa Pharma v EUIPO, C‑442/15 P, not published, EU:C:2016:720, paragraph 35 and the case-law cited, and of 14 July 2017, Sata v EUIPO (4600), T‑214/16, not published, EU:T:2017:501, paragraph 59 and the case-law cited).
85 It follows that claims and arguments intended to deny that the contested measure is well founded are irrelevant in the context of a plea alleging the lack or inadequacy of a statement of reasons (see, to that effect, judgment of 12 May 2011, Région Nord-Pas-de-Calais and Communauté d’agglomération du Douaisis v Commission, T‑267/08 and T‑279/08, EU:T:2011:209, paragraph 45 and the case-law cited).
86 In any event, it is apparent from the contested decision, summarised in paragraphs 18, 21, 33 to 35, 39, 50, 57, 71 and 73 above, that the Board of Appeal provided adequate reasons in support of its conclusion that there is a likelihood of confusion on the part of the relevant Spanish-speaking public in the European Union, within the meaning of Article 8(1)(b) of Regulation 2017/1001.
87 The second plea in law must therefore be rejected and, consequently, the action must be dismissed in its entirety.
Costs
88 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.
89 Although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened. As no hearing was held, each party must bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders Biif Srl and the European Union Intellectual Property Office (EUIPO) to bear their own costs.
Kowalik-Bańczyk | Buttigieg | Hesse |
Delivered in open court in Luxembourg on 12 February 2025.
V. Di Bucci | M. van der Woude |
Registrar | President |
* Language of the case: English.
© European Union
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