OPPOSITION No B 2 647 025

Société des Produits Nestlé S.A.,1800 Vevey, Switzerland (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft mbB, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Alegria S.p.A., Viale John Fitzgerald Kennedy, 77, 70124 Bari, Italy (applicant) represented by Dimitri Russo S.R.L., Via G. Bozzi, 47°, 70121 Bari, Italy (professional representative).

On 10/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 647 025 is partially upheld, namely for the following contested goods and services:

Class 07:        Vending machines; refrigerated vending machines; vending machines (counter operated -).

Class 43:        Services for providing food and drink; providing of food and drink via a mobile truck.

2.        European Union trade mark application No 14 584 791 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 584 791. The opposition is based on, inter alia, international trade mark registration No 1 071 447 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s International trade mark registration No 1 071 447 designating the European Union.

1. The goods and services

The goods on which the opposition is based are the following:

Class 09:        Automatic dispensers for hot and cold foodstuffs and beverages; related refill components, cartridges and spare parts for these machines and apparatus.

Class 11:        Electric machines for preparing all types of refrigerated, cold or hot drinks (except for electromechanical machines), electric coffee machines, electric coffee percolators; cartridges and refills for these apparatus and machines.

Class 30:        Coffee, coffee extracts, coffee-based preparations and beverages; iced coffee; artificial coffee, artificial coffee extracts, preparations and beverages made with artificial coffee; chicory; tea, tea extracts, preparations and beverages made with tea; iced tea; malt-based preparations for human consumption; cocoa and cocoa-based preparations and beverages; chocolate, chocolate goods, chocolate-based preparations and beverages.

The contested goods and services are the following:

Class 07:        Vending machines; refrigerated vending machines; vending machines (counter operated -).

Class 39:        Filling of vending machines; food delivery services; delivery of food and drink prepared for consumption.

Class 43:        Services for providing food and drink; providing of food and drink via a mobile truck.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 7

The contested vending machines; refrigerated vending machines; vending machines (counter operated -) are similar to the opponent’s automatic dispensers for hot and cold foodstuffs and beverages in Class 9. These goods have a similar nature and purpose, that is to dispense, inter alia, hot and cold foodstuffs and beverages. The main difference is that vending machines imply a monetary transaction and a sale, whereas automatic dispensers do not. The method of use is similar and the distribution channels of these goods may coincide. In addition these goods can be in competition with each other.

Contested services in Class 39

The contested filling of vending machines; food delivery services; delivery of food and drink prepared for consumption are dissimilar to all the opponent’s goods. The nature and purpose and method of use of the goods and services are different. The distribution channels and end users do not usually coincide. They are normally neither in competition with each other nor are they complementary. The above mentioned contested services are related to the delivery of goods to be used in vending machines. The delivery of goods is not considered to be similar to the goods themselves so the opponent’s goods in Class 30 are dissimilar. The opponent argues that the same companies that sell coffee also offer vending machine related services. The Opposition Division is of the opinion, however, that this is the exception rather than the rule and it applies only to the most successful coffee producers.

Contested services in Class 43

The contested services for providing food and drink; providing of food and drink via a mobile truck are similar to a low degree to the opponent’s coffee in Class 30. These goods and services are complementary, they may come from the same provider and distribution channels often coincide. 

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be similar and similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise.

Vending machines are expensive products that will be chosen with care by the consumer. The degree of attention is considered to vary from average to high.

3. The signs

NESCAFE ALEGRIA
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘ALEGRIA is meaningful in certain territories, for example, in those countries where Spanish is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public where ‘ALEGRIA’ has no meaning and the likelihood of confusion is greatest.

The contested sign is a figurative mark consisting of the verbal elements ‘alegria Happy vending’ in red. ‘alegria’ is quite dominant in a large bold lowercase fairly normal typeface. Underneath the words ‘Happy vending’ appear in a much smaller finer hand-written type font. The figurative element that appears above is a yellow crescent shape with a red outline above which a swirling line curls upwards resembling a cup containing a steaming beverage and is also dominant. The word ‘alegria’ has no meaning in relation to the goods and services and will not be understood by English-speakers. Therefore it is distinctive. ‘Happy vending’ is clearly understandable in relation to the vending machines and related goods and services and so is weak, as is the figurative element resembling a steaming beverage which may represent the type of goods available in the vending machines.

The earlier mark is the word mark ‘NESCAFE ALEGRIA’. Both verbal elements are distinctive as neither, as a whole, has a meaning in relation to the goods and services at issue. The Court has held, however, that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). With this in mind the Opposition Division considers that the English-speaking part of the public will recognise the meaning of ‘CAFE’ within the verbal element ‘NESCAFE’. In English ‘CAFE’ means ‘a small restaurant selling light meals and drinks’ and ‘a serving of coffee, especially prepared European-style’ (Oxford English Dictionary on 10/05/2017 https://en.oxforddictionaries.com) and so this element is weak for the goods and services at issue.

Visually, the signs coincide in the distinctive word ‘ALEGRIA’ which is one of the dominant elements of the contested sign and the second verbal element of the earlier sign. They differ in the distinctive word of the earlier mark ‘NESCAFE’, in the colour and in the remaining weak elements of the contested sign, namely the stylized cup of steaming beverage and the words ‘Happy vending’.  

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive word ‛ALEGRIA’, present in both signs and dominant in the contested sign. The pronunciation differs in sound of the distinctive word ‘NESCAFE’ in the earlier mark and in the weak elements ‘Happy vending’ of the contested sign.  

Therefore, the signs are aurally similar to an average degree.

Conceptually, the public in the relevant territory will perceive the meaning of the element ‘Happy vending’ and the concept of a steaming beverage in the contested sign, both of which are weak elements which will play a very limited role in the similarity of the signs. The other sign has no meaning as a whole but the concept of ‘CAFE’ will be perceived in the verbal element ‘NESCAFE’. ‘CAFE’ is also weak for the goods and services at issue as explained above. A steaming beverage and ‘CAFE’ will be considered similar concepts.

Therefore the signs are conceptually similar to a low degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case the goods and services have been found partly similar, partly similar to a low degree and partly dissimilar. The signs have been found visually and aurally similar to an average degree and conceptually similar to a low degree.

The earlier sign has a normal degree of distinctive character and the attention of the consumer is considered to vary from average to high.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, the Opposition Division considers that, given the coincidence of the distinctive verbal element ‘ALEGRIA’, there is likelihood of confusion on the part of the English-speaking public. This distinctive coinciding element is also one of the dominant elements in the contested sign to which the attention of the consumer will be drawn. The distinguishing elements of the contested sign are weak. Admittedly the distinguishing element ‘NESCAFE’ of the earlier mark is distinctive but it contains the concept of ‘CAFÉ’ which creates a conceptual link with the earlier sign. It is not, therefore, sufficient to avoid a likelihood of confusion. It is, in fact, highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

The Opposition Division therefore finds that there is a likelihood of confusion on the part of the English-speaking public and therefore the opposition is partly well-founded on the basis of the opponent’s international trade mark registration designating the European Union. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be similar and similar to a low degree to those of the earlier trade mark. The similarity of the signs is enough to outweigh even the low similarity of the goods and services in particular taking into consideration the imperfect recollection of the consumer and the possibility that the consumer could think that the goods and services similar to a low degree are offered by economically linked undertakings.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

• European trade mark registration No 2 950 798 for the word mark ‘ALEGRIA’. 

This other earlier mark covers only goods in Class 30 which are clearly dissimilar to the remaining services of the contested sign in Class 39. The goods and services have a different nature, purpose and method of use. They are not in competition and the distribution channels, the providers/producers and the relevant consumers do not normally coincide. It follows that the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lars HELBERT

Lynn BURTCHAELL

Martin EBERL

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.