JUDGMENT OF THE GENERAL COURT (Third Chamber)

27 October 2016 (*)

(EU trade mark — Application for the EU figurative mark CAFFÈ NERO — Absolute grounds for refusal — No distinctive character — Descriptiveness — Mark of such a nature as to deceive the public — Article 7(1)(b), (c) and (g) of Regulation (EC) No 207/2009)

In Case T‑37/16,

Caffè Nero Group Ltd, established in London (United Kingdom), represented by L. Cassidy, Solicitor,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,

defendant,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 6 November 2015 (Case R 954/2015-1), relating to the application for registration of the figurative sign CAFFÈ NERO as an EU trade mark,

THE GENERAL COURT (Third Chamber),

composed, at the time of the deliberation, of S. Papasavvas (Rapporteur), President, E. Bieliūnas and C. Iliopoulos, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 26 January 2016,

having regard to the response lodged at the Court Registry on 11 April 2016,

having regard to the fact that no request for a hearing was submitted by the main 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

 Background to the dispute

1        On 6 November 2014, the applicant, Caffè Nero Group Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) in accordance with Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2        Registration as a mark was sought for the following figurative sign:

3        The goods and services in respect of which registration was sought are, in particular, in Classes 30 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, inter alia, for each of those classes, to the following description:

–        Class 30: ‘tea, coffee, cocoa; biscuits; cookies; bread, pastry and confectionery, chocolate bars, chocolate covered coffee beans; ices; cakes, flans and puddings; pastries; flavourings; prepared meals consisting primarily of bread, crackers and/or cookies; coffee pods; coffee substitutes; coffee and espresso beverages; beverages made with a base of coffee and/or espresso; coffee based non-alcoholic drinks and soft drinks; ground and whole bean coffee; coffee essences and extracts; herb tea; tea beverages; cocoa and cocoa-based preparations; cocoa beverages; sponges, muffins, scones, pies, and preparations and mixes for making the aforesaid goods; muesli and muesli bars; sauces; syrups, toppings and spreads; sherbets and sorbets; flavoured ices and frozen confections; powdered chocolate and vanilla; flavouring syrups to add to beverages; fillings; porridge; oatmeal’;

–        Class 35: ‘retail store services connected with coffee, tea, cocoa, coffee pods, packaged and prepared foods; on-line retail services connected with coffee, coffee pods, packaged and prepared foods; retail services connected with coffee, coffee pods, packaged and prepared foods provided by mail order; organisation, operation and supervision of incentive schemes to promote the purchase and sale of coffee, coffee pods, packaged and prepared foods’.

4        By decision of 20 March 2015, the examiner rejected the application for registration of a trade mark for the goods and services referred to in paragraph 3 above on the basis of the grounds for refusal set out in Article 7(1)(b), (c) and (g) of Regulation No 207/2009.

5        On 18 May 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision.

6        By decision of 6 November 2015 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal.

7        First of all, the Board of Appeal found that the mark applied for will be perceived by the relevant public as meaning ‘black coffee’, that is to say, coffee served as a beverage without cream, milk or sugar.

8        Then, the Board of Appeal held that, for some of the goods at issue referred to in point 3 above (namely those corresponding to the following description: ‘coffee, biscuits; cookies; bread, pastry and confectionery, chocolate bars, chocolate covered coffee beans; ices; cakes, flans and puddings; pastries, flavourings; prepared meals consisting primarily of bread, crackers and/or cookies; coffee pods; coffee and espresso beverages; beverages made with a base of coffee and/or espresso; coffee based non-alcoholic drinks and soft drinks; ground and whole bean coffee; coffee essences and extracts; sponges, muffins, scones, pies, and preparations and mixes for making the aforesaid goods; muesli and muesli bars; sauces; syrups, toppings and spreads; sherbets and sorbets; flavoured ices and frozen confections; powdered chocolate and vanilla; flavouring syrups to add to beverages; fillings; porridge; oatmeal’) and for the services at issue referred to in paragraph 3 above, the mark applied for will be perceived as a direct and obvious reference to the nature of the goods and of the services relating to the goods; in this instance, it will be understood as an indication that they are or contain black coffee or taste like black coffee.

9        The Board of Appeal also took the view that none of the evidence showed that the mark applied for was unusual or might have its own meaning which, in the perception of the relevant public, might distinguish the goods and services offered by the applicant from those of another undertaking.

10      Accordingly, the Board of Appeal refused to register the mark applied for in respect of the goods referred to in paragraph 8 above and the services at issue, on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009.

11      Lastly, the Board of Appeal held that, for some of the goods at issue referred to in paragraph 3 above (namely those corresponding to the following description: ‘tea, cocoa, coffee substitutes; herb tea; tea beverages; cocoa and cocoa-based preparations; cocoa beverages; preparations and mixes for making the aforesaid goods; powdered chocolate’), consumers were likely to believe that those goods were or contained black coffee, even if, in actual fact, this was not the case. The Board of Appeal therefore refused to register the mark applied for in respect of those goods, on the basis of Article 7(1)(g) of Regulation No 207/2009.

 Forms of order sought

12      The applicant claims, in essence, that the Court should:

–        annul the contested decision and allow the trade mark application to proceed to registration;

–        order EUIPO to pay the costs.

13      EUIPO contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

 Law

14      In support of its action, the applicant raises, in essence, four pleas in law, alleging: (i) infringement of Article 7(1)(c) of Regulation No 207/2009; (ii) infringement of Article 7(1)(b) of the regulation; (iii) infringement of Article 7(1)(g) of the regulation; and (iv) infringement of the principles of equal treatment and sound administration.

 The first plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009

15      The applicant claims, in essence, that the Board of Appeal was wrong in finding that the mark applied for was descriptive of the goods and services at issue for the purposes of Article 7(1)(c) of Regulation No 207/2009.

16      Under that provision, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered. In addition, Article 7(2) of Regulation No 207/2009 states that ‘paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the [European] Union’.

17      According to the case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications to which it refers from being reserved to just one undertaking because they have been registered as trade marks. That provision thus pursues an aim that is in the public interest, which requires that such signs and indications may be freely used by all (see judgment of 7 November 2014, Kaatsu Japan v OHIM (KAATSU), T‑567/12, not published, EU:T:2014:937, paragraph 27 and the case-law cited).

18      Furthermore, signs or indications which may serve in trade to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 207/2009, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, in order thereby to enable the consumer who acquired the goods or service designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (judgment of 7 November 2014, KAATSU, T‑567/12, not published, EU:T:2014:937, paragraph 28).

19      It follows that, in order for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further reflection, a description of the goods and services in question or one of their characteristics (see judgment of 7 November 2014, KAATSU, T‑567/12, not published, EU:T:2014:937, paragraph 29 and the case-law cited).

20      It should also be noted that a sign’s descriptive nature can only be assessed, first, by reference to the way in which it is understood by the relevant public and, second, by reference to the goods or services concerned (see judgment of 7 November 2014, KAATSU, T‑567/12, not published, EU:T:2014:937, paragraph 30 and the case-law cited).

21      In the present case, in the first place, as to the public concerned, it should be noted, first, that the applicant disputes neither the Board of Appeal’s finding that the goods at issue are directed at the general public nor that the services at issue are directed at the professional public but may also be provided to the general public. It is appropriate, in any event, to note that those goods and services are mainly directed at the general public. Secondly, having regard to the nature of the goods and services in question, the Board of Appeal was fully entitled to hold that the level of attention of the relevant public is, in general, average and that the consumer is deemed to be reasonably well informed and reasonably observant and circumspect, a finding which the applicant does not, in fact, call in question. Thirdly, pursuant to Article 7(2) of Regulation No 207/2009, the target public by reference to which the absolute ground for refusal must be assessed is Italian-speaking, as the Board of Appeal noted without being challenged on that point by the applicant, since the sign in question is composed of word elements of the Italian language (see, to that effect, judgment of 12 June 2007, MacLean-Fogg v OHIM (LOKTHREAD), T‑339/05, not published, EU:T:2007:172, paragraph 41 and the case-law cited).

22      In the second place, for the purpose of applying Article 7(1)(c) of Regulation No 207/2009, it is necessary to consider, on the basis of a given meaning of the sign in question, whether, from the point of view of the target public, there is a sufficiently direct and specific association between the sign CAFFÈ NERO and the goods or the services in respect of which registration is sought (see, to that effect, judgment of 12 June 2007, LOKTHREAD, T‑339/05, not published, EU:T:2007:172, paragraph 42 and the case-law cited).

23      So far as concerns, first, the sign at issue, it must be noted that that sign is composed of two word elements varying in size, written in black capital letters, surrounded by a rectangle with a blue background. Those two word elements are both terms commonly used in Italian, in this instance, the noun ‘caffè’, which means ‘coffee’, and the adjective ‘nero’, which means ‘black’, the former being placed above the latter. As a whole, and according to Italian grammar and syntax, the combination of those two terms will thus be perceived by the public concerned as meaning ‘black coffee’.

24      In that regard, the Board of Appeal pointed out that the Italian-speaking consumer will understand the expression ‘caffè nero’ as meaning ‘black coffee’, that is to say, coffee served as a beverage without cream, milk or sugar.

25      The applicant contends that the expression ‘caffè nero’ has no meaning either in Italian or in the Italian coffee culture. The applicant claims that coffee is referred to by using a specific name, not by reference to its colour. It submits that the Board of Appeal’s finding is not supported by any evidence and is contrary to the evidence that it produced.

26      In that regard, it should be noted that, admittedly, the Board of Appeal did not expressly rely on any specific evidence to show that the Italian-speaking public will understand the expression ‘caffè nero’ as meaning ‘black coffee’, that is to say, coffee served as a beverage without cream, milk or sugar.

27      However, the competent bodies of EUIPO may be led to base their decisions on facts which have not been put forward by the applicant for the mark. Whilst it is in principle the task of those bodies to establish in their decisions the accuracy of such facts, such is not the case where they allege facts which are well known (see judgment of 19 April 2007, OHIM v Celltech, C‑273/05 P, EU:C:2007:224, paragraphs 38 and 39 and the case-law cited).

28      In the present case, as pointed out by the Board of Appeal, the fact that the Italian-speaking consumer will understand the expression ‘caffè nero’ as meaning ‘black coffee’, that is to say, coffee served as a beverage without cream, milk or sugar, can be considered to be a well-known fact which the applicant cannot ignore.

29      In fact, it is a matter of common knowledge that in many Member States the literal translation into their own language of the expression ‘caffè nero’ will be understood by the general public as referring to coffee served as a beverage without any additions, and that that is how an Italian-speaking public will understand the expression ‘caffè nero’.

30      That finding is not called into question by the applicant’s claim that the Board of Appeal came to its interpretation of the sign at issue by translating it into English and by applying an English definition. In fact, that claim is based on a misreading of the contested decision. It is true that the contested decision is written in English, because English was the language of the case before the bodies of EUIPO. However, there is no evidence in the contested decision that permits the inference that the Board of Appeal, in assessing the descriptiveness of the sign CAFFÈ NERO, relied on the English translation of that sign or on the Italian-speaking public’s perception of the translation. Indeed, the Board of Appeal makes no reference to the meaning of the sign in English. The applicant’s entire argument on the meaning of the sign in English must therefore be rejected.

31      The Court must also reject the contention that, in Italian and in the Italian coffee culture, coffee is referred to by using a specific name, not by reference to its colour, and that the terms ‘black coffee’ are not used to refer to coffee served as a beverage without cream, milk or sugar. Indeed, the fact that the evidence put forward in support of that contention, relating to coffee culture in Italy, does not mention the expression ‘caffè nero’ does not prove, as such, that the sign at issue will not be understood as referring to black coffee as understood by the Board of Appeal. Moreover, this evidence consists of extracts from web pages, all of which are written in English and most of which are directed at a non-Italian-speaking public for the purposes of tourism. This evidence, therefore, does not appear capable of proving, on its own, that the Italian-speaking public will not understand the expression ‘caffè nero’ as the Board of Appeal understood it. In this respect, EUIPO does not dispute the fact noted by the applicant that coffee culture in Italy is rich and varied, with many rules, nuances and idiosyncrasies. Nevertheless, even if it were true that the expression ‘caffè nero’ were not a part of that culture, it would be incapable of altering the fact that, when faced with that expression, the Italian-speaking public will understand that it refers to coffee served as a beverage without any additions. The Board of Appeal, thus, did not err in finding that it was irrelevant that there are other terms which might be used more frequently than ‘caffè nero’ to refer to coffee-based beverages.

32      It follows that the applicant did not put forward any evidence challenging the Board of Appeal’s finding that the sign CAFFÈ NERO will be understood by the Italian-speaking consumer as meaning ‘black coffee’, that is to say, coffee served as a beverage without cream, milk or sugar.

33      In any event, it is important to note that, even if the Italian-speaking public does not usually refer to coffee by reference to its colour, the sign at issue will, at least, be understood by that public as being evocative of coffee which is black in colour.

34      Secondly, as regards the nature of the relationship between the sign at issue and the goods and services at issue, it should be noted that the goods in respect of which the Board of Appeal considered that Article 7(1)(c) of Regulation No 207/2009 did apply (see paragraph 8 above) are foodstuffs for everyday consumption. This includes, inter alia, coffee in various forms, coffee-related goods or foodstuffs that taste like coffee or foodstuffs to be consumed concomitantly with coffee served as a beverage. It must also be noted that the services in question are services related to foodstuffs. They include, inter alia, services related to the sale of coffee and coffee pods and its promotion.

35      Consequently, having regard to the perception of the sign at issue by the relevant public, the Board of Appeal did not err in finding that, in respect of those goods and those services, the sign will be understood as an indication that the goods are or contain black coffee or taste like black coffee, or that the foodstuffs to which the services relate are or contain black coffee or taste like black coffee. It should be added that that finding can apply, mutatis mutandis, to the ‘coffee substitutes’ in Class 30, notwithstanding the fact that the Board of Appeal did not carry out such an assessment.

36      The applicant contends that the goods and services at issue are not coffee served as a beverage without cream, milk or sugar. In that regard, it must be pointed out, first, that the goods at issue include, inter alia, ‘beverages made with a base of coffee and/or espresso’ and ‘coffee based non-alcoholic drinks and soft drinks’, which include coffee served as a beverage. Secondly, the other goods concerned either are or contain coffee in various forms, or they might, at least, taste like black coffee. Similarly, all the services concerned can be related to the sale of goods which taste like that. The applicant’s objection must therefore be rejected. For the same reasons, in conjunction with those set out in paragraph 30 above, the Court rejects the argument that, in English, the expression ‘black coffee’ is descriptive only in relation to coffee prepared and served as a beverage.

37      Moreover, the Court points out, in any event, that even if the Italian-speaking public did perceive the sign at issue as being evocative of coffee which is black in colour (paragraph 33 above), not as referring to black coffee as understood by the Board of Appeal, the sign would still be descriptive of the goods and services in respect of which the Board of Appeal applied the ground for refusal in Article 7(1)(c) of Regulation No 2007/2009. Indeed, the public concerned would immediately perceive, without further reflection, that the goods are or contain black coffee or taste like that, and that the services relate to the sale and promotion of those goods.

38      In the third place, and lastly, with regard to the perception of the sign at issue as a whole, the applicant takes the view that the Board of Appeal failed to give sufficient weight to the figurative elements of the sign.

39      In that regard, it must be recalled that the Board of Appeal considered that those elements, inter alia, the typeface, the size of the letters and the colours used, as well as the overall composition of the sign, did not depart significantly from those commonly used in trade. The Board of Appeal thus took the view that those elements would not make an immediate and lasting impression on the relevant public and that, therefore, the examiner was correct in finding that the graphic representation of the sign at issue did not endow the mark applied for, as a whole, with any distinctive character.

40      Thus, notwithstanding the fact that that examination was carried out in the context of explanations relating to the absolute ground for refusal in Article 7(1)(b) of Regulation No 207/2009, the Court must reject the applicant’s argument that, in essence, the Board of Appeal only cursorily addressed the figurative elements of the sign at issue without substantiating its assertions in that regard. The Board of Appeal did indeed examine the influence of those elements on the perception of the sign and in doing so it explained its assessment to the requisite legal standard.

41      The Court also finds that the applicant is wrong in claiming that the Board of Appeal failed to consider the overall perception of the sign at issue by the relevant public. Indeed, it is apparent from the contested decision that the Board of Appeal’s finding is based, inter alia, on the ‘overall composition of the sign’ and on its perception by the ‘relevant public’, thus confirming the examiner’s assessment, which refers to the ‘mark applied for, as a whole’.

42      Finally, the Court finds that the Board of Appeal did not err in confirming the examiner’s assessment that the figurative representation of the sign at issue did not endow the mark applied for, as a whole, with any distinctive character. Indeed, the applicant mentions in its application that it demonstrated, before the Board of Appeal, that the typeface used is not standard, but is a distinctive, invented typeface, that the words vary in size and are positioned in a distinctive manner, thus creating a stacked effect, and that a contrasting blue background is used. However, a graphic style, even if it has some specific feature, may be regarded as a distinctive figurative element only if it is capable of conveying an immediate and lasting impression which members of the relevant public may retain in a way that makes it possible for them to distinguish the goods of the applicant for the figurative mark from those of the other providers on the market. That is not the case, inter alia, where the graphic style used is a largely common one in the eyes of the relevant public (see, to that effect, judgment of 19 May 2010, Zeta Europe v OHIM (Superleggera), T‑464/08, not published, EU:T:2010:212, paragraphs 32 and 33) or where the figurative element is only there to highlight the information conveyed by the word elements (see, to that effect, judgment of 15 December 2009, Media-Saturn v OHIM (BEST BUY), T­‑476/08, not published, EU:T:2009:508, paragraph 27). In the present case, however, while the figurative elements in the sign at issue have some specific features, the fact remains that they are incapable of either conveying an immediate and lasting impression which members of the relevant public may retain or of distinguishing the applicant’s goods from those of the other suppliers on the market. In particular, neither the typeface used, nor the positioning or the size of the word elements ‘caffè’ and ‘nero’, nor the rectangular frame around them with a background in colour, whether taken individually or as a whole, endow the sign at issue with a specific feature which could make it distinctive, since those elements are largely common ones in the eyes of any consumer. It is indeed usual that the word elements of a mark are placed in a rectangular frame, which is a simple geometrical form used to highlight information, are written in black capital letters against a background in a different colour, vary in size and are stacked on top of each other. As to the evidence adduced by the applicant before the Board of Appeal, while it may illustrate the specific features of the typeface used, it does not prove that the typeface, including in conjunction with the other figurative elements of the sign at issue, conveys an immediate and lasting impression which members of the relevant public will retain. In that regard, the fact that the Board of Appeal does not expressly refer to it does not mean that it failed to give it sufficient weight, as claimed by the applicant. It follows from all of the above that the Board of Appeal did not err in confirming the examiner’s assessment that the figurative elements of the sign at issue did not endow the mark applied for, as a whole, with any distinctive character.

43      It follows from all of the foregoing that the Board of Appeal did not err in finding that the sign at issue is descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009.

44      The first plea in law must therefore be rejected.

 The second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009

45      The applicant considers that the Board of Appeal was wrong to hold that the mark applied for was devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009.

46      In that regard, it must be recalled that it is sufficient that one of the absolute grounds for refusal listed in Article 7(1) of Regulation No 207/2009 applies for the sign at issue not to be registrable as an EU trade mark (see judgment of 12 January 2005, Wieland-Werke v OHIM (SnTEM, SnPUR, SnMIX), T‑367/02 to T‑369/02, EU:T:2005:3, paragraph 45 and the case-law cited). Consequently, since the ground for refusal mentioned in Article 7(1)(b) of Regulation No 207/2009 was applied by the Board of Appeal to the same goods and the same services as those for which the ground for refusal in Article 7(1)(c) applies, there is no need to adjudicate on the second plea in law. After all, it should be recalled that the descriptive signs referred to in Article 7(1)(c) of Regulation No 207/2009 are also devoid of any distinctive character for the purposes of Article 7(1)(b) of that regulation (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 46). It follows, first, that the Court must reject, as being ineffective, the argument that the ‘best-case scenario’ should be looked at when examining the application for registration, meaning that if it can reasonably be assumed that the mark applied for is distinctive for the goods or services at issue, then registration should be allowed. Accordingly, secondly, in the light of the assessments relating to the first plea in law concerning the descriptive character of the mark applied for, the second plea in law would have to be rejected in any event.

47      The Court must still examine the third plea in law, which relates to the ground for refusal mentioned in Article 7(1)(g) of Regulation No 207/2009, opposing registration of the mark applied for in respect of some of the goods at issue, despite the fact that the grounds for refusal mentioned in Article 7(1)(b) and (c) of the regulation were also applied to some of those goods by the Board of Appeal.

 The third plea in law, alleging infringement of Article 7(1)(g) of Regulation No 207/2009

48      The applicant is of the opinion that the ground for refusal in Article 7(1)(g) of Regulation No 207/2009 does not apply. According to the applicant, that ground cannot be applied where a non-deceptive use of the mark at issue is possible. It claims that, in the present case, a non-deceptive use of the sign CAFFÈ NERO is possible for the goods and services concerned. The sign could indeed be perceived as referring to goods and services supplied by a coffee house with the name ‘NERO’. The applicant claims that the Board of Appeal did not take account of this best-case scenario and thus applied an unfavourable test.

49      In that regard, it must be recalled that, under Article 7(1)(g) of Regulation No 207/2009, registration is to be refused for trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.

50      In the present case, the Board of Appeal considered that consumers were likely to believe that some of the goods referred to in the application for registration, namely tea, cocoa, coffee substitutes, herb tea, tea beverages, cocoa and cocoa-based preparations, cocoa beverages, preparations and mixes for making the aforesaid goods, and powdered chocolate, were or contained black coffee, even if, in actual fact, this was not the case. In that regard, it pointed out that those goods were sold in packaging which is quite similar to that used for coffee and that consumers may often have to buy those goods rather hastily, without necessarily taking the time to analyse the wording on the packaging. According to the Board of Appeal, it is likely that consumers will pick those goods from the shelf in the erroneous belief that they are or contain coffee. The Board of Appeal therefore endorsed the examiner’s analysis concerning the refusal to register pursuant to Article 7(1)(g) of Regulation No 207/2009 in respect of those goods.

51      The Court finds that the applicant does not put forward any argument challenging the grounds of the Board of Appeal in support of that assessment, but is claiming, in essence, that the Board of Appeal applied the wrong test and that it should have found that the ground for refusal in Article 7(1)(g) of Regulation No 207/2009 did not apply since a non-deceptive use of the mark applied for was possible.

52      In that regard, it must be pointed out that, according to settled case-law, the circumstances for refusing registration referred to in Article 7(1)(g) of Regulation No 207/2009 presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived. The essential function of a trade mark is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from 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 Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality. However, a mark loses that role where the information it contains is of such a nature as to deceive the public (see judgment of 5 May 2011, SIMS — École de ski internationale v OHIM — SNMSF (esf école du ski français), T‑41/10, not published, EU:T:2011:200, paragraphs 49 and 50 and the case-law cited).

53      It follows from the foregoing that, once the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived has been established, it becomes irrelevant that the mark applied for might also be perceived in a way that is not misleading. Indeed, the mark is, on any view, of such a nature as to deceive the public and is therefore unable to fulfil its role, which is to guarantee the origin of the goods and services to which it refers.

54      Consequently, the Court must reject the applicant’s argument that, in essence, Article 7(1)(g) of Regulation No 207/2009 does not apply when a non-deceptive use of the mark at issue is possible.

55      Thus, having regard to the fact that, as has been noted, the applicant does not, in its application, put forward any additional arguments challenging the grounds given by the Board of Appeal in order to justify the application of Article 7(1)(g) of Regulation No 207/2009, the third plea in law must be rejected.

 The fourth plea in law, alleging breach of the principles of equal treatment and sound administration

56      The applicant submits that it is the proprietor of two EU marks, a word mark and a figurative mark, containing the word elements ‘caffè nero’, which were registered in respect of some of the goods and services covered by the mark applied for. According to the applicant, by retaining the objections against the mark applied for in respect of the goods and services for which those two marks have been registered, the Board of Appeal infringed the principles of equal treatment and sound administration.

57      In that regard, it must be recalled that EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide them in the same way or not (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 74).

58      Moreover, for reasons of legal certainty and sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77).

59      In addition, according to settled case-law, decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the question whether a sign may be registered as an EU trade mark must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of any previous practice of the Boards of Appeal (see judgment of 24 November 2015, Intervog v OHIM (meet me), T‑190/15, not published, EU:T:2015:874, paragraph 42 and the case-law cited).

60      In the present case, it is apparent from the contested decision that the Board of Appeal performed a full and specific examination of the trade mark applied for before refusing to register it. In addition, it is apparent from the analysis of the applicant’s other pleas in law that that examination led the Board of Appeal to find, correctly, that the absolute grounds for refusal to register referred to in Article 7(1)(b), (c) and (g) of Regulation No 207/2009 existed and thus precluded the registration of the trade mark applied for. Since the examination of the latter in the light of those provisions did not, in itself, lead to a different outcome, the applicant’s claims concerning the registration of other marks cannot succeed. The applicant may thus not usefully rely on a previous decision of EUIPO in order to cast doubt on the conclusion that the registration of the mark applied for is incompatible with Regulation No 207/2009 (see, to that effect, judgment of 24 November 2015, meet me, T‑190/15, not published, EU:T:2015:874, paragraph 43).

61      It follows that the fourth plea in law must be rejected and, consequently, the action dismissed in its entirety.

 Costs

62      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.

63      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Third Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Caffè Nero Group Ltd to pay the costs.

Papasavvas

Bieliūnas

Iliopoulos

Delivered in open court in Luxembourg on 27 October 2016.

[Signatures]