Monster Energy v OHMI - Balaguer (icexpresso + energy coffee) (Judgment) [2015] EUECJ T-61/14 (06 October 2015)

Judgment Background to the dispute On 9 May 2011, the other party to the proceedings, Mr Luis Yus Balaguer, filed an application for registration of a Community trade mark at 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). Registration as a mark was sought for the following figurative sign: The goods and services for which registration was sought fall within Classes 9, 30, 32, and 35 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, in relation to each of those classes, to the following description: – Class 9: ‘Coin-operated vending machines’; – Class 30: ‘Coffee-based, tea-based, cocoa-based and chocolate-based beverages; iced tea; Coffee or cocoa mixtures for the manufacture of alcoholic beverages or non-alcoholic drinks, ice’; – Class 32: ‘Non-alcoholic beverages including refreshing drinks, Energy drinks, Whey drinks, isotonic beverages; Beers, mineral and aerated waters; fruit beverages and fruit juices; Syrups and other preparations for making beverages’; – Class 35: ‘Wholesaling, retailing in shops and via global computer networks of beverages based on coffee, tea, cocoa or chocolate, iced tea, cocoa or coffee mixtures for the manufacture of alcoholic beverages or non-alcoholic drinks, ice, non-alcoholic drinks including refreshing drinks, energy drinks, whey beverages and isotonic beverages, beers, mineral and aerated waters, fruit drinks and fruit juices, syrups and other preparations for making beverages, wholesaling and sale via global computer networks of vending machines’. By decision of 9 September 2011, the examiner refused, in part, the application for registration of a Community trade mark for part of the goods and services covered on the basis of Article 7(1)(g) and 7(2) of Regulation No 207/2009. The Community trade mark application was published in Community Trade Marks Bulletin No 1/2012 of 2 January 2012. The application for registration, as amended after limitation of certain goods in classes 30 and 32, now corresponds to the following description: – Class 9: ‘Coin-operated vending machines’; – Class 30: ‘Coffee-based beverages; Coffee mixtures for the manufacture of alcoholic beverages or non-alcoholic drinks, ice’; – Class 32: ‘Non alcoholic beverages including refreshing drinks, Energy drinks, Whey drinks, isotonic beverages; Beers, mineral and aerated waters; Syrups and other preparations for making beverages’; – Class 35: ‘Wholesaling, retailing in shops and via global computer networks of beverages based on coffee, tea, cocoa or chocolate, iced tea, cocoa or coffee mixtures for the manufacture of alcoholic beverages or non-alcoholic drinks, ice, non-alcoholic drinks including refreshing drinks, energy drinks, whey beverages and isotonic beverages, beers, mineral and aerated waters, fruit drinks and fruit juices, syrups and other preparations for making beverages, wholesaling and sale via global computer networks of vending machines’. On 30 March 2012, the applicant, Monster Energy Company, filed a notice of opposition to registration of the sign applied for in respect of the goods and services referred to in paragraph 6 above, pursuant to Article 41 of Regulation No 207/2009. The opposition was based on the following earlier marks: – the Community word mark X-PRESSO MONSTER, registered on 28 January 2010 under number 8445711; – the Community word mark HAMMER M X-PRESSO MONSTER ESPRESSO + ENERGY, registered on 5 July 2010 under number 8815722; – the Community word mark MIDNIGHT M X-PRESSO MONSTER ESPRESSO + ENERGY, registered on 5 July 2010 under number 8815748. As regards the earlier mark registered under number 8445711, the opposition was based on all of the goods in Classes 5 and 32 designated by that mark and corresponding, for each of those classes, to the following description: – Class 5: ‘Nutritional supplements’; – Class 32: ‘Non-alcoholic beverages, including, energy drinks flavoured with coffee and enhanced with vitamins, minerals, nutrients, amino acids and/or herbs, excluding perishable beverage products that contain fruit juice or soy’. As regards the earlier marks registered under the numbers 8815722 and 8815748, the opposition was based on all of the goods in Classes 5 and 32 designated by that mark and corresponding, for each of those classes, to the following description: – Class 5: ‘Nutritional supplements’; – Class 32: ‘Non-alcoholic beverages, namely, energy drinks flavoured with coffee and enhanced with vitamins, minerals, nutrients, amino acids and/or herbs’. The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009. On 11 March 2013, the Opposition Division rejected the opposition. On 30 April 2013, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division. By decision of 15 November 2013 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. As a preliminary point, the Board of Appeal indicated, at paragraph 18 of the contested decision, that its examination concerned the earlier marks registered under numbers 8815748 and 8445711. However, at paragraph 59 of the contested decision, it stated, in essence, that as the earlier mark registered under number 8815722 covered the same goods as the earlier mark registered under number 8815748 and had an identical composition to the latter except for the element ‘hammer’ which replaces the element ‘midnight’, its assessments regarding the earlier mark registered under number 8815748 applied equally to the earlier mark registered under number 8815722. Primarily, and in the first place, the Board of Appeal, in paragraphs 19 and 20 of the contested decision, first defined the relevant territory as being that of the European Union and the relevant public as being the average consumer in that territory, who is reasonably well informed and reasonably observant and circumspect, and whose level of attention is neither particularly high nor particularly low. Secondly, the Board of Appeal noted, at the outset, at paragraphs 27 to 29 of the contested decision, that certain word elements of the signs at issue, since they were descriptive of some of the goods and services at issue, had a weak distinctive character, so that they would not attract the attention of the consumer as much as other more distinctive elements. That was the case, on the one hand, for the words ‘expresso’, ‘x-presso’, ‘espresso’ and ‘coffee’, which refer to a kind of coffee-based beverage, designated in Classes 30 and 32, and, on the other hand, the expressions ‘espresso energy’ and ‘energy coffee’, which refer to energy beverages and are descriptive of the goods and services falling within Class 9 and Class 35, which concern, in particular, that type of beverage. In the second place, as regards the visual comparison between the signs at issue, the Board of Appeal concluded, in paragraphs 30 to 33 and, in essence, paragraph 59 of the contested decision, first, that there was no visual similarity between the mark applied for and the earlier marks registered under numbers 8815748 and 8815722. Secondly, the Board of Appeal concluded, at paragraphs 34 to 37 of the contested decision, that there was a low degree of similarity between the mark applied for and the earlier mark registered under number 8445711. In the third place, as regards the phonetic comparison between the signs at issue, the Board of Appeal, in paragraphs 38 to 45 and, in essence, paragraph 59 of the contested decision, concluded that there was a low degree of phonetic similarity between the mark applied for and the earlier marks relied on by the applicant. In the fourth place, as regards the conceptual comparison between the signs at issue, the Board of Appeal concluded, in paragraphs 46 to 49 and, in essence, paragraph 59 of the contested decision, that, on the one hand, for a part of the relevant public, there was a conceptual similarity in so far as the signs at issue refer to the idea of a coffee-based beverage, of the espresso type, that gives energy, and, on the other hand, for the remainder of the public, who did not perceive any clear semantic meaning from those signs, the conceptual comparison remained neutral. In the fifth place, with regard to the examination of the likelihood of confusion, at paragraphs 54 to 62 of the contested decision, after taking the view that, since the common elements between the signs at issue are descriptive and therefore of low distinctiveness, those signs had a low degree of similarity, the Board of Appeal concluded that, even assuming the goods and services at issue are identical, there was no likelihood of confusion. Forms of order sought by the parties The applicant claims that the Court should: – annul the contested decision; – order OHIM to pay the costs. OHIM contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. As a preliminary point, it argues that the Board of Appeal only examined the likelihood of confusion between the mark applied for and the two earlier marks registered under numbers 8815748 and 8445711. Primarily, in essence, it claims that the Board of Appeal committed three errors of assessment which relate, respectively, to (i) the determination of the dominant and distinctive elements of the mark applied for, (ii) the analysis of the similarity of the signs at issue and (iii) the examination of the likelihood of confusion. Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the sign applied for cannot 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 signs 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. According to established case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned 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 designated (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 33 and the case-law cited). For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the signs at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009 in Commercy v OHIM –– easyGroup IP Licensing (easyHotel) , T‑316/07, ECR, EU:T:2009:14 , paragraph 42 and the case-law cited). In the present case, it must be noted, as a preliminary point, that, contrary to what is claimed by the applicant, the Board of Appeal concluded, at paragraph 59 of the contested decision, that there was no likelihood of confusion between the mark applied for and the earlier mark registered under number 8815722, after applying, by analogy, the reasoning adopted with regard to the analysis of that likelihood in relation to the earlier mark registered under number 8815748, as has been stated in paragraph 15 above. Primarily, it must be observed at the outset that, first, the definition of the relevant public and territory, at paragraphs 19 and 20 of the contested decision, which is, moreover, not contested by the applicant, must be upheld. Secondly, as regards the comparison of the goods and services covered by the signs at issue, it should be noted that the Board of Appeal did not make such a comparison and that, at paragraphs 55 and 62 of the contested decision, it applied, with regard to the examination of the likelihood of confusion between the signs at issue, the presumption that is most favourable to the applicant, namely that the goods and services at issue are identical. The applicant endorses that presumption. The error of assessment concerning the determination of the dominant and distinctive elements of the mark applied for The applicant argues, in essence, that as the application for registration of the mark applied for relates only to a figurative mark in black and white and does not indicate that the figurative element contains the representation of a metallic tube, that element will be perceived by the relevant public as consisting only of two black lateral columns and one wider white central column. Accordingly, that figurative element is, it claims, insignificant compared with the word element which, in a composite trade mark, consisting of word and figurative elements, usually makes a stronger impression in the mind of the consumer. Consequently, only the word element and the symbol ‘+’, which the mark applied for contains, attract the attention of the relevant public and are distinctive. It should be noted as a preliminary point that, in paragraph 26 of the contested decision, the Board of Appeal did not, as the applicant claims, find that the word elements of that mark were written in a silver and metallic colour. In that paragraph, as regards the graphic device consisting of those elements, the Board of Appeal found only that they were written in silver or black. It was in relation to the black background of the figurative element that it found that it contained a ‘metallic’ tube in the centre. Primarily, it must be recalled, to begin with, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have a graphic form capable of creating a visual impression (see judgment of 4 May 2005 in Chum v OHIM — Star TV (STAR TV) , T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited). Next, in accordance with well-established case-law, it is necessary to take account of the perception of the marks by the relevant public in order to carry out a global assessment of the likelihood of confusion (judgments of 11 November 1997 in SABEL , C‑251/95, ECR, EU:C:1997:528, paragraph 23, and 22 June 1999 in Lloyd Schuhfabrik Meyer , C‑342/97, ECR, EU:C:1999:323, paragraph 25). Furthermore, again in accordance with settled case-law, the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, inter alia, 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 proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker , C‑334/05 P, ECR, EU:C:2007:333 , paragraph 35 and the case-law cited). Finally, the 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. The comparison must be made by examining each of the marks at issue as a whole, but that 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 33 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 (see judgments in OHIM v Shaker , cited in paragraph 33 above, EU:C:2007:333 , paragraph 42, and of 20 September 2007 in Nestlé v OHIM , C‑193/06 P, EU:C:2007:539 , paragraph 42). That may be the case, in particular, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression created by the mark ( Nestlé v OHIM , EU:C:2007:539 , paragraph 43). In the present case, it is undisputed that the application for registration of the mark applied for refers only to the colour black and the colour white and that there is no reference to any metallic tube in the description of the figurative element that it contains. Nevertheless, those characteristics of the application for registration of the mark applied for are not sufficient to find that the figurative element that it contains is insignificant compared with its word element, so that, even assuming the latter to be dominant, the assessment of similarity could be carried out solely on that basis. In that regard, it should be noted that, according to settled case-law, where a sign consists of both figurative and word elements, it does not automatically follow that it is the word element which must always be considered to be dominant. In the case of a composite mark, the figurative element may rank equally with the word element (see judgment of 13 December 2012 in Natura Selection v OHIM — Ménard (natura) , T‑461/11, EU:T:2012:693, paragraph 47 and the case-law cited). First, as regards the figurative element of the mark applied for, it is sufficient to note that, notwithstanding the fact that the application for registration of the mark applied for was submitted in black and white and does not identify the central column as containing a representation of a metallic tube, in accordance with the case-law referred to in paragraph 31 above, the relevant public will perceive the mark applied for as containing a figurative element which, by an optical effect brought about by the shades of grey that make up that column, represents such a tube. Furthermore, the Board of Appeal was entitled to find that the figurative element will attract the attention of that public. Owing, in particular, on the one hand, to the contrast between the black colour of the lateral columns and the white colour, with shades of light grey, of the central column and, on the other hand, to the vertical rhythm that emerges from the three columns that occupy the overall setting in which the mark applied for is reproduced, the figurative element which the latter contains is, as the Board of Appeal held, constituted in a specific and original way. Secondly, it must, admittedly, be held that, in the contested decision, the Board of Appeal did not explicitly identify the distinctive or dominant elements contained in the mark applied for. However, on the one hand, in paragraphs 27 to 29 of the contested decision, the Board of Appeal held that, in essence, the words ‘expresso’ and ‘energy coffee’ which constitute that mark were distinctive to a low degree, having regard to their descriptiveness of the goods and services at issue, so that consumers will not pay as much attention to those elements as to other more distinctive elements. On the other hand, as regards the figurative element of the mark applied for, the Board of Appeal noted, in paragraph 31 of the contested decision, that it was set out ‘in a specific and original way [which] contributes to the differences between [the marks at issue]’. Consequently, having regard to the case-law referred to in paragraph 34 above, the Board of Appeal did not err when it relied on the overall impression produced by the mark applied for, without taking into account, as the applicant claims, that the figurative element is insignificant compared with the word element, and that, consequently, it carried out the examination of the similarity between the signs at issue on the basis of the combination of the word elements and the figurative element that constitute the mark applied for. Having regard to the reasons set out in paragraph 38 above, that finding of the Board of Appeal is not vitiated by any error of assessment. In conclusion, the argument based on an error of assessment of the dominant and distinctive elements of the mark applied for must be rejected as unfounded. The error of assessment concerning the analysis of the similarity of the signs at issue The visual comparison First, the Board of Appeal held, in paragraphs 30 to 33 and, in essence, 59 of the contested decision, that the earlier marks registered under numbers 8815748 and 8815722 were visually different insofar as, on the one hand, the word elements that they have in common were descriptive and, therefore, not distinctive, and, on the other hand, the word elements that differentiate them and the figurative element of the mark applied for clearly outweigh any similarity. Secondly, in paragraph 37 of the contested decision, it held that the earlier mark registered under number 8445711 and the mark applied for were visually similar to a low degree, owing to the presence of the descriptive and non-distinctive words ‘x-presso’ and ‘icexpresso’ respectively. The applicant argues that, since, on the one hand, the word element of the mark applied for is dominant and consumers have an imperfect recollection of long trade marks, and, on the other hand, the symbol ‘+’ is present in the mark applied for and in two earlier marks, the Board of Appeal was wrong to find that the degree of visual similarity between the signs at issue was low. As noted in paragraphs 31 and 34 above, first, there is no reason why there cannot be visual similarity between a word mark and a figurative mark and, second, 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. In the present case, first, it must be held that the earlier marks are different from the mark applied for in respect of the following elements. To begin with, the mark applied for does not contain equivalents of the elements ‘midnight’, ‘hammer’, ‘m’ and ‘monster’ appearing in the earlier marks. Next, the word ‘xpresso’ of the mark applied for cannot be read separately from the whole word ‘icexpresso’, whereas the earlier marks contain an ‘x-presso’ element which is not linked to any other word, but is clearly identifiable. Finally, unlike the mark applied for, which contains a figurative element that, as was held in paragraph 38 above, will visually attract the attention of the relevant public, the earlier marks do not contain any such element. Secondly, it must, admittedly, be pointed out that the signs at issue all have in common the letter ‘x’ and the word ‘presso’, joined in the mark applied for and connected with a hyphen in the earlier marks. Moreover, the mark applied for and the earlier marks registered under the numbers 8815722 and 8815748 also have in common the word ‘energy’ and the symbol ‘+’. However, it should be noted that, according to established case-law, as regards a mark containing word elements, the consumer generally pays greater attention to the beginning of a mark than to the end (judgments of 21 February 2013 in Esge v OHIM — De’Longhi Benelux (KMIX) , T‑444/10, EU:T:2013:89, paragraph 27, and 19 April 2013 in Hultafors Group v OHIM — Società Italiana Calzature (Snickers) , T‑537/11, EU:T:2013:207, paragraph 41). It is therefore necessary to examine the position of the words and the symbol common to the signs at issue in order to assess whether the beginning of the mark, to which the consumer will pay more attention, is likely to reveal a visual similarity between those signs. In that regard, it should be noted, with regard to the mark applied for, which consists of three word elements and a symbol, that, to begin with, the word ‘xpresso’, which is closest to the word ‘x-presso’ that appears in the three earlier marks, is placed after the word ‘ice’, to which it is joined to form the word ‘icexpresso’. Next, the symbol ‘+’ appears after that word. Finally, the elements ‘energy’ and ‘coffee’ appear below the word ‘icexpresso’ and the symbol ‘+’ and are written in letters that are sloping and smaller than the letters of that word. As regards the earlier marks registered under the numbers 8815722 and 8815748, which are composed of seven word elements, the element ‘x-presso’ is placed in third position and the symbol ‘+’ and the element ‘energy’ are respectively placed in sixth and seventh position. Therefore, in accordance with the case-law set out in paragraph 45 above, the similarity between the mark applied for and the earlier marks registered under the numbers 8815722 and 8815748 will refer at most to the ‘xpresso’ element of the former and to the third ‘x-presso’ element of the earlier marks. As regards the earlier mark registered under the number 8445711, which contains two word elements, the element ‘x-presso’ occupies the first place. Therefore, in accordance with the case-law noted in paragraph 45 above, the similarity between the mark applied for and the earlier mark registered under the number 8445711 will refer at most to the ‘xpresso’ element of the former and to the ‘x-presso’ element of the latter. It appears from the findings set out in paragraphs 48 and 49 above that, in view of the elements that differentiate the signs at issue, as identified in paragraph 44 above, the Board of Appeal was entitled to conclude that, overall, the earlier marks registered under numbers 8815722 and 8815748 were visually different from the mark applied for and, moreover, the earlier mark registered under number 8445711 and the mark applied for were visually similar to a low degree. The phonetic comparison The Board of Appeal found, at paragraphs 43, 45 and, in essence, 59 of the contested decision, that the degree of phonetic similarity between the signs at issue was low. The applicant does not put forward any argument regarding the finding of the Board of Appeal, in paragraph 45 of the contested decision, that the earlier mark registered under number 8445711 has a low degree of phonetic similarity with the mark applied for. However, the applicant claims that, as regards the earlier marks registered under the numbers 8815722 and 8815748, to begin with, the Board of Appeal incorrectly analysed the symbol ‘+’. In essence, that symbol in those marks, it is claimed, is not pronounced as ‘and’ or ‘n’ in its abbreviated version, but rather as ‘plus’, so that there is a phonetic similarity between the signs at issue. Next, the Board of Appeal did not produce any evidence that consumers tend to shorten long trade marks. Finally, those two earlier marks and the mark applied for have the same number and sequence of syllables in the section ‘expresso (plus/and) energy’. First, it should be noted that the word elements ‘x-presso’ and ‘energy’ and the symbol ‘+’ which appear in the earlier marks are not placed in the same order as the word elements ‘xpresso’ and ‘energy’ and the symbol ‘+’ contained in the mark applied for. In the abovementioned earlier marks, the word ‘monster espresso’ is placed between the element ‘x-presso’ and the symbol ‘+’ followed by the element ‘energy’. Secondly, as has been noted in paragraph 44 above, certain word elements of the earlier marks do not have equivalents in the mark applied for and vice versa. Furthermore, the signs at issue consist of a number of different word elements, letters and syllables. Consequently, taken together, those signs do not have the same number and sequence of syllables, so that they have a different rhythm and intonation. Thirdly, according to established case-law, it is possible to abbreviate a long trade mark to an easily separable element, that is the most visible and clearly stands out (order of 28 September 2012 in Kokomarina v OHIM — Euro Shoe Group (interdit de me gronder IDMG) , T‑568/11, EU:T:2012:511, paragraph 44, and judgment of 3 July 2013 in Warsteiner Brauerei Haus Cramer v OHIM — Stuffer (ALOHA 100% NATURAL) , T‑243/12, EU:T:2013:344, paragraph 34). Furthermore, as is apparent from the case-law referred to in paragraph 45 above, the consumer generally pays greater attention to the beginning of a mark than to the end. Therefore, the Board of Appeal was entitled to find, at paragraphs 41 and, in essence, 59 of the contested decision, that the relevant public will, for reasons of language economy, tend to shorten, on the one hand, the earlier marks registered under numbers 8815748 and 8815722 to the first part of the word elements that constitute them, namely ‘midnight m x-presso’ and ‘hammer m x-presso’, at most adding the word ‘monster’ and, on the other hand, as regards the mark applied for, to the first element that constitutes it, namely ‘icexpresso’. Fourthly, even assuming that, as the applicant claims, the Board of Appeal incorrectly analysed the pronunciation of the symbol ‘+’, which appears in the mark applied for and the earlier marks registered under the numbers 8815722 and 8815748, it must be held that that pronunciation cannot alter the degree of phonetic similarity likely to be found, on the basis of the analysis of all the other word elements that constitute the two abovementioned earlier marks and the mark applied for. In the first place, regardless of the English pronunciation of the symbol ‘+’, namely as ‘plus’ or as ‘and’, that pronunciation will involve a single syllable only, whereas, on the one hand, the two abovementioned earlier marks consist of 15 syllables and, on the other hand, the mark applied for consists of 10. In the second place, as was held in paragraph 56 above, the relevant public will tend to shorten those marks, so that the symbol ‘+’ will not be pronounced. It follows from the foregoing considerations that the Board of Appeal was entitled to find, in paragraphs 43, 45 and, in essence, 59 of the contested decision, that the signs at issue were phonetically similar to a low degree. The conceptual comparison As regards the conceptual comparison, the Board of Appeal found, to begin with, at paragraphs 46 and 48 and, in essence, 59 of the contested decision, that the earlier marks consisted of a combination of English words that have no clear meaning as a whole. Next, it pointed out, in essence, in paragraphs 27, 47 and 48 of the contested decision, that the word elements common to the signs at issue, in so far as some of them are identical or almost identical to each other, namely the words ‘expresso’, ‘x-presso’, ‘espresso’, ‘coffee’ and ‘energy’, refer, for English speaking and even non-English speaking consumers in most of the relevant territory, to a coffee-based beverage, of the expresso type which, moreover, gives energy. Moreover, in paragraphs 47 and 48 of the contested decision, as regards the word elements that are not common to the signs at issue, the Board of Appeal found (i) that the word ‘midnight’ meant ‘twelve o’clock at night’ and would only be understood by the English speaking public, (ii) that the element ‘m’ was a simple, meaningless letter, (iii) that the element ‘monster’ designated a mythical creature with animal or human attributes, large in size and ferocious, and the element ‘ice’ designated frozen water. As regards the word ‘iceexpresso’, the Board of Appeal found that, even if perceived as one and the same word, that did not prevent it from being understood by the English speaking public as referring to a cold, coffee-based beverage, of the espresso type. Finally, at paragraph 47 of the contested decision, the Board of Appeal held that the symbol ‘+’ was the only element that would be understood without exception throughout the relevant territory. At paragraph 49 of the contested decision, the Board of Appeal found that the signs at issue could refer to the idea of a coffee-based beverage, of the expresso type, which gives energy, and that, despite certain elements which differentiate them, there was a degree of conceptual similarity for consumers who perceive that aspect. As regards other consumers, the signs at issue have no clear semantic meaning, so that the conceptual comparison remains neutral. The applicant argues that (i) where the public perceives their semantic content, the signs at issue are conceptually identical or similar, (ii) that similarity is all the more likely as the figurative element of the mark applied for is purely decorative and (iii) that similarity is reinforced by the shared use of the word ‘energy’ and the symbol ‘+’. According to the case-law, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgments in Lloyd Schuhfabrik Meyer , cited in paragraph 32 above, EU:C:1999:323, paragraph 25, and OHIM v Shaker , cited in paragraph 33 above, EU:C:2007:333 , paragraph 35), the fact remains that, when perceiving a word sign, he will break it down into word elements which, for him, suggest a concrete meaning or which resemble words known to him (see, to that effect, judgments of 6 October 2004 in Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT) , T‑356/02, ECR, EU:T:2004:292 , paragraph 51, and 27 February 2008 in Citigroup v OHIM — Link Interchange Network (WORLDLINK) , T‑325/04, EU:T:2008:51, paragraph 80). Furthermore, as is apparent from the case-law referred to in paragraph 45 above, the consumer generally pays greater attention to the first part of a trade mark. In the present case, first, it must be held that, in the light of all the assessments made by the Board of Appeal in paragraphs 46 to 48 of the contested decision, with regard to the reasonably well informed and circumspect majority of the relevant public, who perceives the semantic content of the signs at issue, those signs have a certain conceptual similarity. Secondly, it should be noted that the applicant does not contest the assessments made by the Board of Appeal, in paragraphs 47 and 48 of the contested decision, with regard to the conceptual comparison, which led it to point out significant conceptual differences relating to the words ‘ice’, ‘monster’ and ‘midnight’. Nor, on the other hand, does it contest that the word elements common to the signs at issue, namely the words ‘expresso’, ‘x-presso’, ‘espresso’ and ‘energy’, refer to a coffee-based beverage, of the espresso type, that gives energy. Thirdly, as regards the meaning of the symbol ‘+’ which appears in the mark applied for and the earlier marks registered under the numbers 8815722 and 8815748, in accordance with the case-law cited in paragraph 45 above, as the consumer generally pays more attention to the first part of a mark, the conceptual scope of the symbol ‘+’ will not attract his attention as much as the first word elements of the signs at issue. In those circumstances, as in the context of the examination of the phonetic similarity between the abovementioned marks, the meaning of the symbol ‘+’ cannot alter the degree of conceptual similarity that may be found, on the basis of the analysis of all the other word elements that constitute those marks. Consequently, the applicant is wrong to claim that the symbol ‘+’ contributes to reinforcing the conceptual similarity between those signs. Fourthly, as regards the semantic analysis of the word element ‘energy’, common to the signs at issue, it must be noted that the Board of Appeal has clearly taken this into account in paragraphs 47 and 48 of the contested decision. Given the elements of conceptual differentiation between the signs at issue, as noted by the Board of Appeal in those paragraphs of the contested decision, it must be held that the Board of Appeal did not make an error of assessment in finding, with due regard for the word element ‘energy’, that there is a certain conceptual similarity between those signs. Accordingly, the applicant is wrong to claim that the word element ‘energy’ brings the conceptual similarity between those signs to a level higher than that found by the Board of Appeal. It follows from the considerations set out in paragraphs 63 to 66 above that the Board of Appeal was entitled to find that, from the point of view of the majority of the relevant public, the signs at issue had a certain conceptual similarity. The overall assessment of the similarity of the signs at issue In the light of all the considerations set out above concerning the similarity of the signs at issue, it must be held that, notwithstanding the elements common to those signs, they are significantly different from one another owing (i) to the presence, in the mark applied for, of the word ‘ice’ and of the figurative element as described in paragraph 38 above, (ii) to the presence of the words ‘hammer’ and ‘midnight,’ in the earlier marks registered under the numbers 8815722 and 8815748, and the word ‘monster’, in all the earlier marks, and (iii) to the position of the word elements in each of the signs at issue. Therefore, the Board of Appeal was entitled to find, at paragraph 58 of the contested decision, that that degree of similarity between the signs at issue, overall, is low. In conclusion, the argument alleging an error of assessment, with regard to the comparison of the signs at issue, must be rejected as unfounded. The error of assessment concerning the examination of the likelihood of confusion The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the marks and the similarity of the goods or services concerned. 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 in Canon , C‑39/97, ECR, EU:C:1998:442 , paragraph 17, and 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 74). As a preliminary remark, it must be pointed out that, although the Board of Appeal did not carry out a detailed and comparative examination of the goods and services covered by the mark applied for, on the one hand, and the goods covered by the earlier marks, on the other, the Board of Appeal assumed, at paragraph 55 of the contested decision, that those goods and services are identical. Primarily, it is apparent from paragraphs 55, 57 and, in essence, 59 of the contested decision that the Board of Appeal found that, even assuming that the signs at issue cover the same goods and services, that identity is offset by the fact that those signs coincide only in the non-dominant, descriptive and non-distinctive elements, namely, on the one hand, ‘x-presso’ for all the earlier marks and ‘energy’ for the earlier marks registered under the numbers 8815722 and 8815748 and, on the other hand, ‘xpresso’ and ‘energy’ for the mark applied for. The applicant argues that, even if the signs at issue have a low degree of visual, phonetic and conceptual similarity, they have a significant number of dominant and distinctive elements in common that may lead to a likelihood of confusion between the mark applied for and the earlier marks. It should also be noted that where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is registered or the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character (see, to that effect, judgments of 12 September 2007 in Koipe v OHIM — Aceites del Sur (La Española) , T‑363/04, ECR, EU:T:2007:264 , paragraph 92, and 13 December 2007 in Cabrera Sánchez v OHIM — Industrias Cárnicas Valle (el charcutero artesano) , T‑242/06, EU:T:2007:391 , paragraph 52 and the case-law cited). In the present case, as is apparent from the overall examination of the similarity of the signs at issue, it must be noted that the word elements common to those signs refer, in the mind of the majority of the relevant public, to the idea of a coffee-based beverage, of the espresso type, that gives energy, so that they are elements that are descriptive of the goods and services at issue. Therefore, those common elements are, at most, distinctive to a low or very low degree. It follows from the foregoing considerations that the Board of Appeal was entitled to find that the word elements common to the signs at issue will not attract the attention of the relevant public and, therefore, to conclude that, even if the goods and services at issue are identical, there was no likelihood of confusion. In conclusion, the argument based on an error of assessment as to the likelihood of confusion between the signs at issue must be rejected as being unfounded. In the light of the conclusions drawn in paragraphs 40, 71 and 79 above, since none of the arguments advanced by the applicant in its single plea in support of the present action is well founded, that plea must, for the same reason, be rejected and the action must, therefore, be dismissed in its entirety. Costs 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM. On those grounds, THE GENERAL COURT (Second Chamber) hereby: 1. Dismisses the action; 2. Orders Monster Energy Company to bear its own costs and to pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). Martins Ribeiro Gervasoni Madise Delivered in open court in Luxembourg on 6 October 2015. [Signatures] Table of contents Background to the dispute Forms of order sought by the parties Law The error of assessment concerning the determination of the dominant and distinctive elements of the mark applied for The error of assessment concerning the analysis of the similarity of the signs at issue The visual comparison The phonetic comparison The conceptual comparison The overall assessment of the similarity of the signs at issue The error of assessment concerning the examination of the likelihood of confusion Costs * 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. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII