A ARTIGIANO EAT & DRINK WORK & PLAY | Decision 2692252 – Alois Dallmayr Kaffee oHG v. HK4 Group Limited

OPPOSITION No B 2 692 252

Alois Dallmayr Kaffee oHG, Dienerstr. 14-15, 80331 München, Germany (opponent), represented by Taylor Wessing, Isartorplatz 8, 80331 München, Germany (professional representative)

a g a i n s t

HK4 Group Limited, 1 Colleton Crescent, Exeter Devon EX2 4DG, United Kingdom (applicant), represented by Ashfords Llp, Ashford House Grenadier Road, Exeter EX1 3LH, United Kingdom (professional representative).

On 25/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 692 252 is partially upheld, namely for the following contested goods and services:

Class 30: Coffee, tea, cocoa and artificial coffee; coffee, cocoa, tea (herbal and non-herbal); ready-to-drink coffee; chocolate items; powdered chocolate and vanilla, flavouring syrups to add to beverages; bases for making milkshakes [flavourings].

Class 32: Mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages; aerated water; non-alcoholic ciders; non-alcohol wines; non-alcoholic aperitifs; beverages containing vitamins; beverages enriched with added vitamins; whey beverages; non-alcoholic cocktails; energy drinks; energy drinks containing caffeine; flavoured carbonated beverages; fruit juice; gurana drinks; honey-based beverages; isotonic beverages; isotonic drinks; hypertonic and hypotonic drinks (for use and/or as required by athletes); sports drinks; non-alcoholic malt free beverages; non-dairy milk; non-alcoholic aloe vera drinks; table waters; tomato juice [beverage]; waters; effervescent (sherbet) tablets and effervescent powders for drinks; smoothies (non-alcoholic fruit beverages); syrups for making beverages and fruit flavoured drinks; frozen fruit beverages and frozen fruit-based beverages; non-alcoholic beverages flavoured with tea; non-alcoholic beverages flavoured with coffee.

Class 35: Retail and wholesale services in relation to drink (a broad term covering beverages such as coffee and tea), coffee, tea, cocoa and artificial coffee, ready-to-drink coffee; the bringing together, for the benefit of others, enabling customers to conveniently view and purchase all of these goods from a retail shop, namely, coffee, unroasted coffee, artificial coffee, tea, cocoa, cocoa-based beverages, chocolate- based beverages, cold tea.

Class 43: Services for the provision of food and drink; provision of facilities for the consumption of food and beverages; cafes; restaurants; brasseries; snack bars; self-service restaurants; restaurants; canteens; cafes; cafeterias; coffee shops; bars; wine bars; cocktail bars; tea rooms; delicatessens; fast food services; preparation of food and drink; catering services; information, advisory and consultancy services relating to the aforesaid services; preparation of carry-out foods for consumption off the premises; catering services provided online from a computer database or from the Internet.

2. European Union trade mark application No 14 684 971 is rejected for all the above goods and services. It may proceed for the remaining goods and services, namely:

Class 7: Machines for use in the treatment, preparation, mixing or dispensing of foods and drinks; Electric coffee grinders, electric coffee mills, coffee extracting machines; automatic vending machines; power-operated coffee grinders.

Class 9: Computer application software for mobile devices and mobile phones, namely, software for consumers to access menu data and store location information; electronic timers and counters; magnetic encoders; identity cards; cash cards; recorded media including computer software; educational software; educational programmes in the form of software; thermometers; scales; safety covers for data processing electrical equipment and apparatus; safety alarms; protective and safety equipment; monitoring instruments; mouse pads.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; coffee machines, electric coffee making machines, machines for cooking, heating or warming of food or drink, electrical apparatus for making or brewing coffee, espresso, tea, cocoa or chocolate beverages; coffee roaster; automatic installations for making coffee; electric coffee filters.

Class 16: Coffee filters of paper, paper bags, wrapping and packaging materials; instructional and teaching materials; paper serviettes.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; non-electric apparatus for making or brewing coffee, espresso, tea, cocoa or chocolate beverages; non-electric appliances for making soft drinks; kitchenware, tableware and cookware; non-electric grinding and milling apparatus; hand-operated coffee grinders and coffee mills; insulated coffee and beverage cups; reusable coffee filters; collapsible cup carriers and caddies; non-paper coasters; insulated vacuum bottles; coffee cups; tea cups and mugs; non-electric drip coffee makers, non-electric plunger-style coffee makers; paper cups.

Class 30: Rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt and pepper; mustard; vinegar, sauces (condiments); spices; ice; baked goods, pastries and breads, and ready-to-make mixes of the same; sandwiches; pizzas; pasta and pasta products; cakes; ketchup and sauces; preparations for making sauces; spices; vinegar, chutney; custard powder; salad dressings; prepared meals; mousses and puddings; confectionery items; hot and cold ready-to-eat fruit and whole grain based cereal.

Class 32: Beers; ale; lager; porter; shandy; stout; kvass; low-alcohol beer; Vegetable juices; malt wort; malt beer; ginger beer; coffee-flavoured beers; coffee-flavoured ales.

Class 33: Alcoholic beverages (except beers); alcoholic beverages containing fruit; alcoholic essences; alcoholic extracts; aperitifs; bitters; brandy; cachaca; calvados; cream liqueurs; cider; cocktails; curacao; digesters [liqueurs and spirits]; distilled beverages; alcoholic fruit extracts; gin; grappa; hydromel [mead]; kirsch; liqueurs; nira [sugarcane-based alcoholic beverage]; peppermint liqueurs; perry; piquette; pre-mixed alcoholic beverages (other than beer-based); rice alcohol; rum; sake; spirits [beverages]; tequila; vodka; whisky; wine; alcoholic energy drinks; alcoholic punches; blended whisky; bourbon whiskey; carbonated alcoholic beverages; distilled beverages and spirits; flavoured spirits; liqueurs containing cream; low alcoholic drinks; low alcoholic wine; malt whisky; mulled wines; port; port wines; rum punch; sangria; schnapps; sherry; sparkling wines; vermouth; alcoholic tea-based beverages; alcoholic coffee-based beverages.

Class 35: Retail and wholesale services in relation to food, coffee grinders, coffee mills, coffee extracting machines, automatic vending machines, power-operated coffee grinders, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, coffee machines, electric coffee making machines, machines for cooking, heating or warming of food or drink, electrical apparatus for making or brewing coffee, espresso, tea, cocoa or chocolate beverages, coffee roaster, automatic installations for making coffee, electric coffee filters, coffee filters of paper, paper cups, paper bags, wrapping and packaging materials, instructional and teaching materials, paper serviettes, household or kitchen utensils and containers, glassware, porcelain and earthenware, utensils and containers, non- electric apparatus for making or brewing coffee, espresso, tea, cocoa or chocolate beverages, kitchenware, tableware and cookware, non-electric grinding and milling apparatus, hand-operated coffee grinders and coffee mills, insulated coffee and beverage cups, reusable coffee filters, collapsible cup carriers and caddies, non-paper coasters, insulated vacuum bottles, coffee cups, tea cups and mugs, non-electric drip coffee makers, non-electric plunger-style coffee makers, rice, tapioca and sago, flour and preparations made from cereals, bread, pastry and confectionery, ices, sugar, honey, treacle, yeast, baking-powder, salt and pepper, mustard, vinegar, sauces (condiments), spices, ice, powdered chocolate and vanilla, flavouring syrups to add to beverages, baked goods, pastries and breads (and ready-to-make mixes of the same), sandwiches, pizzas, pasta and pasta products, cakes, ketchup and sauces, preparations for making sauces, spices, vinegar, chutney, custard powder, salad dressings, prepared meals, mousses and puddings, chocolate and confectionery items, hot and cold ready-to-eat fruit and whole grain based cereal, milkshakes; advertising; organisation of trade shows; advertising; business management; business administration; office functions; organisation, operation and supervision of loyalty schemes and incentive schemes; organisation, operation and supervision of sales incentive schemes; on-line administration and supervision of a discount schemes; business information; advisory services for business management; the bringing together, for the benefit of others, enabling customers to conveniently view and purchase all of these goods from a retail shop, namely, automatic vending machines, grinding machines, filtering machines, brewing machines, cutting machines, filling machines, blending machines, mixing machines, handheld tools (not-hand operated), food and beverage processing and preparation equipment, electric coffee grinders, electric coffee mills, coffee extracting machines, power-operated coffee grinders, aerated beverage making machines, electric fruit presses, electric fruit squeezers, machines for preparing beverages, business software applications, coffee machines, electric coffee making machines, machines for cooking, heating or warming of food or drink, electrical apparatus for making or brewing coffee, espresso, tea, cocoa or chocolate beverages, electric beverage heaters for domestic or commercial use, coffee roasters, automatic installations for making coffee, electric coffee filters, water filters, water filtration and purification units and replacement cartridges and filters thereof, electric kettles, ice machines and apparatus, cooling appliances and installations, paper, cardboard, printed matter, bookbinding material, photographs, disposable paper products, coffee filters of paper, paper bags, wrapping and packaging materials, instructional and teaching materials, paper serviettes, absorbent paper, bathroom tissue, bibs of paper, coasters of paper or cardboard, printed forms, savings stamps, glassware, porcelain, earthenware, nonelectric apparatus for making or brewing espresso, non-electric apparatus for making or brewing tea, non-electric apparatus for making or brewing cocoa, non-electric apparatus for making or brewing chocolate beverages, kitchenware, tableware, cookware, non- electric grinding and milling apparatus, hand-operated coffee grinders and coffee mills, insulated coffee and beverage cups, reusable coffee filters, collapsible cup carriers and caddies, coffee services [tableware], non-electric coffee-pots, non- paper coasters, insulated vacuum bottles, coffee cups, tea cups and mugs, non-electric drip coffee makers, decorative storage containers for food, lunch boxes, tea infusers, tea pots, tea strainers, paper cups, nonelectric blenders for household purposes, non-electric coffee filters, non-electric cooking utensils, heat-insulated containers, glasses, drinking vessels, coffee creamer, milk-based beverages containing coffee, vinegar, waffles, wheat flour, wheat germ for human consumption, yeast, confectionery, non-medicated confectionery, frozen confectionery, sugar confectionery, chocolate, chocolate confections, confectionery in frozen form, confectionery bars, lozenges, pastilles, sweets, ice lollies, chocolates, biscuits, cakes, pastries, wafers, snack foods, ice cream and ice cream products, chilled and frozen confections and desserts, syrups, beers, mineral waters, aerated waters, non-alcoholic beverages, fruit beverages, fruit juices, syrups, preparations for making beverages, aerated water, ale, lager, porter, shandy, stout, kvass, low-alcohol beer, non-alcoholic ciders, non-alcohol wines, non-alcoholic aperitifs, beverages containing vitamins, beverages enriched with added vitamins, Whey beverages, non-alcoholic cocktails, energy drinks, energy drinks containing caffeine, flavoured carbonated beverages, fruit juice, gurana drinks, honey-based beverages, isotonic beverages, isotonic drinks, hypertonic and hypotonic drinks (for use and/or as required by athletes), sports drinks, non-alcoholic malt free beverages, non-dairy milk, non-alcoholic aloe vera drinks, Table waters, Tomato juice [beverage], Vegetable juices, Waters, effervescent (sherbet) tablets and effervescent powders for drinks, smoothies (non-alcoholic fruit beverages), malt wort, malt beer, ginger beer, syrups for making beverages and fruit flavoured drinks, frozen fruit beverages and frozen fruit-based beverages, non-alcoholic flavoured with tea, non-alcoholic flavoured with coffee, coffee-flavoured beers, coffee-flavoured ales, alcoholic beverages, alcoholic beverages containing fruit, alcoholic essences, alcoholic extracts, aperitifs, bitters, brandy, cachaca, calvados, cream liqueurs, cider, cocktails, curacao, digesters [liqueurs and spirits], distilled beverages, alcoholic fruit extracts, gin, grappa, hydromel [mead], kirsch, liqueurs, nira [sugarcane-based alcoholic beverage], peppermint liqueurs, perry, piquette, premixed alcoholic beverages (other than beer-based), rice alcohol, rum, sake, spirits [beverages], tequila, vodka, whisky, wine, alcoholic energy drinks, alcoholic punches, blended whisky, bourbon whiskey, calvados, carbonated alcoholic beverages, distilled beverages and spirits, flavoured spirits, grappa, liqueurs containing cream, low alcoholic drinks, low alcoholic wine, malt whisky, mulled wines, port, port wines, rum punch, sangria, schnapps, sherry, sparkling wines, tequila, vermouth, alcoholic tea-based beverages, alcoholic coffee-based beverages; provision of information to customers and advice or assistance in the selection of goods brought together as above.

Class 38: The provision of access to internet services from within self-service restaurants, restaurants, coffee shops, cafés, cafeterias, bistros, canteens, snack bars, pizza bakery shops, bakeries, takeaway food premises, fast-food premises, bars, public houses, nightclubs, wine bars, hotels and other premises involved in the provision of food and beverage services.

Class 39: Delivery services for pizzas; delivery services for hot and cold foods; delivery services for prepared meals; delivery services for alcoholic and non-alcoholic beverages; delivery services for teas, coffees and coffee based drinks.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; education and training services relating to catering, hospitality, the provision of food and drink; education and training services relating to the preparation and serving of coffee; barista training services; organisation of seminars, shows and demonstration events relating to food and drink.

Class 42: Design services for self-service restaurants, restaurants, coffee shops, cafés, cafeterias, bistros, canteens, snack bars, pizza bakery shops, bakeries, takeaway food premises, fast-food premises, bars, public houses, nightclubs, wine bars, hotels and the design of other premises involved in the provision of food and beverage services.

Class 43: Temporary accommodation; provision of venues for parties, balls, weddings and events; hotel reservations; crèche services; information, advisory and consultancy services relating to the aforesaid services; information relating to food, drink and catering services provided online from a computer database or from the Internet.

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 14 684 971. The opposition is based on international trade mark registration No 1 244 388 designating Austria, Benelux and France and German trade mark registration No 302 014 053 936. 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 goods and services

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

IR No 1 244 388:

Class 30: Coffee; coffee extracts; tea; tea extracts; cocoa; cocoa extracts; coffee substitutes; coffee-based, tea-based, chocolate-based and cocoa-based beverages, including mixtures and preparations therefore; non-alcoholic coffee, tea, cocoa and chocolate beverages; non-alcoholic, ready-to-drink coffee, tea, cocoa and chocolate preparations.

DE No 302 014 053 936:

Class 30: Coffee; coffee extracts; tea; tea extracts; cocoa; cocoa extracts; artificial coffee; mixtures for coffee-containing, tea-containing, chocolate-containing and cocoa-containing beverages; alcohol-free coffee, tea, cocoa and chocolate beverages; alcohol-free ready-to-drink coffee, tea, cocoa and chocolate preparations.

The contested goods and services are the following:

Class 16: Coffee filters of paper, paper bags, wrapping and packaging materials; instructional and teaching materials; paper serviettes.

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt and pepper; mustard; vinegar, sauces (condiments); spices; ice; coffee, cocoa, tea (herbal and non-herbal), powdered chocolate and vanilla, flavouring syrups to add to beverages; baked goods, pastries and breads, and ready-to-make mixes of the same; sandwiches; pizzas; pasta and pasta products; cakes; ketchup and sauces; preparations for making sauces; spices; vinegar, chutney; custard powder; salad dressings; prepared meals; mousses and puddings.chocolate and confectionery items; hot and cold ready-to-eat fruit and whole grain based cereal, ready-to-drink coffee, bases for making milkshakes [flavourings].

Class 32: Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages; aerated water; ale; lager; porter; shandy; stout; kvass; low-alcohol beer; non-alcoholic ciders; non-alcohol wines; non-alcoholic aperitifs; beverages containing vitamins; beverages enriched with added vitamins; Whey beverages; non-alcoholic cocktails; energy drinks; energy drinks containing caffeine; flavoured carbonated beverages; fruit juice; gurana drinks; honey-based beverages; isotonic beverages; isotonic drinks; hypertonic and hypotonic drinks (for use and/or as required by athletes); sports drinks; non-alcoholic malt free beverages; non-dairy milk; non-alcoholic aloe vera drinks; Table waters; Tomato juice [beverage]; Vegetable juices; Waters; effervescent (sherbet) tablets and effervescent powders for drinks; smoothies (non-alcoholic fruit beverages); malt wort; malt beer; ginger beer; syrups for making beverages and fruit flavoured drinks; frozen fruit beverages and frozen fruit-based beverages; non-alcoholic beverages flavoured with tea; non-alcoholic beverages flavoured with coffee; coffee-flavoured beers; coffee-flavoured ales.

Class 35: Retail and wholesale services in relation to food and drink, coffee grinders, coffee mills, coffee extracting machines, automatic vending machines, power-operated coffee grinders, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, coffee machines, electric coffee making machines, machines for cooking, heating or warming of food or drink, electrical apparatus for making or brewing coffee, espresso, tea, cocoa or chocolate beverages, coffee roaster, automatic installations for making coffee, electric coffee filters, coffee filters of paper, paper cups, paper bags, wrapping and packaging materials, instructional and teaching materials, paper serviettes, household or kitchen utensils and containers, glassware, porcelain and earthenware, utensils and containers, non- electric apparatus for making or brewing coffee, espresso, tea, cocoa or chocolate beverages, kitchenware, tableware and cookware, non-electric grinding and milling apparatus, hand-operated coffee grinders and coffee mills, insulated coffee and beverage cups, reusable coffee filters, collapsible cup carriers and caddies, non-paper coasters, insulated vacuum bottles, coffee cups, tea cups and mugs, non-electric drip coffee makers, non-electric plunger-style coffee makers, coffee, tea, cocoa and artificial coffee, rice, tapioca and sago, flour and preparations made from cereals, bread, pastry and confectionery, ices, sugar, honey, treacle, yeast, baking-powder, salt and pepper, mustard, vinegar, sauces (condiments), spices, ice, powdered chocolate and vanilla, flavouring syrups to add to beverages, baked goods, pastries and breads (and ready-to-make mixes of the same), sandwiches, pizzas, pasta and pasta products, cakes, ketchup and sauces, preparations for making sauces, spices, vinegar, chutney, custard powder, salad dressings, prepared meals, mousses and puddings, chocolate and confectionery items, hot and cold ready-to-eat fruit and whole grain based cereal, ready-to-drink coffee, milkshakes; advertising; organisation of trade shows; advertising; business management; business administration; office functions; organisation, operation and supervision of loyalty schemes and incentive schemes; organisation, operation and supervision of sales incentive schemes; on-line administration and supervision of a discount schemes; business information; advisory services for business management; the bringing together, for the benefit of others, enabling customers to conveniently view and purchase all of these goods from a retail shop, namely, automatic vending machines, grinding machines, filtering machines, brewing machines, cutting machines, filling machines, blending machines, mixing machines, handheld tools (not-hand operated), food and beverage processing and preparation equipment, electric coffee grinders, electric coffee mills, coffee extracting machines, power-operated coffee grinders, aerated beverage making machines, electric fruit presses, electric fruit squeezers, machines for preparing beverages, business software applications, coffee machines, electric coffee making machines, machines for cooking, heating or warming of food or drink, electrical apparatus for making or brewing coffee, espresso, tea, cocoa or chocolate beverages, electric beverage heaters for domestic or commercial use, coffee roasters, automatic installations for making coffee, electric coffee filters, water filters, water filtration and purification units and replacement cartridges and filters thereof, electric kettles, ice machines and apparatus, cooling appliances and installations, paper, cardboard, printed matter, bookbinding material, photographs, disposable paper products, coffee filters of paper, paper bags, wrapping and packaging materials, instructional and teaching materials, paper serviettes, absorbent paper, bathroom tissue, bibs of paper, coasters of paper or cardboard, printed forms, savings stamps, glassware, porcelain, earthenware, nonelectric apparatus for making or brewing espresso, non-electric apparatus for making or brewing tea, non-electric apparatus for making or brewing cocoa, non-electric apparatus for making or brewing chocolate beverages, kitchenware, tableware, cookware, non- electric grinding and milling apparatus, hand-operated coffee grinders and coffee mills, insulated coffee and beverage cups, reusable coffee filters, collapsible cup carriers and caddies, coffee services [tableware], non-electric coffee-pots, non- paper coasters, insulated vacuum bottles, coffee cups, tea cups and mugs, non-electric drip coffee makers, decorative storage containers for food, lunch boxes, tea infusers, tea pots, tea strainers, paper cups, nonelectric blenders for household purposes, non-electric coffee filters, non-electric cooking utensils, heat-insulated containers, glasses, drinking vessels, coffee creamer, milk-based beverages containing coffee, coffee, unroasted coffee, artificial coffee, tea, cocoa, cocoa-based beverages, chocolate- based beverages, vinegar, waffles, wheat flour, wheat germ for human consumption, yeast, confectionery, non-medicated confectionery, frozen confectionery, sugar confectionery, chocolate, chocolate confections, confectionery in frozen form, confectionery bars, lozenges, pastilles, sweets, ice lollies, chocolates, biscuits, cakes, pastries, wafers, snack foods, ice cream and ice cream products, chilled and frozen confections and desserts, cold tea, syrups, beers, mineral waters, aerated waters, non-alcoholic beverages, fruit beverages, fruit juices, syrups, preparations for making beverages, aerated water, ale, lager, porter, shandy, stout, kvass, low-alcohol beer, non-alcoholic ciders, non-alcohol wines, non-alcoholic aperitifs, beverages containing vitamins, beverages enriched with added vitamins, Whey beverages, non-alcoholic cocktails, energy drinks, energy drinks containing caffeine, flavoured carbonated beverages, fruit juice, gurana drinks, honey-based beverages, isotonic beverages, isotonic drinks, hypertonic and hypotonic drinks (for use and/or as required by athletes), sports drinks, non-alcoholic malt free beverages, non-dairy milk, non-alcoholic aloe vera drinks, Table waters, Tomato juice [beverage], Vegetable juices, Waters, effervescent (sherbet) tablets and effervescent powders for drinks, smoothies (non-alcoholic fruit beverages), malt wort, malt beer, ginger beer, syrups for making beverages and fruit flavoured drinks, frozen fruit beverages and frozen fruit-based beverages, non-alcoholic flavoured with tea, non-alcoholic flavoured with coffee, coffee-flavoured beers, coffee-flavoured ales, alcoholic beverages, alcoholic beverages containing fruit, alcoholic essences, alcoholic extracts, aperitifs, bitters, brandy, cachaca, calvados, cream liqueurs, cider, cocktails, curacao, digesters [liqueurs and spirits], distilled beverages, alcoholic fruit extracts, gin, grappa, hydromel [mead], kirsch, liqueurs, nira [sugarcane-based alcoholic beverage], peppermint liqueurs, perry, piquette, premixed alcoholic beverages (other than beer-based), rice alcohol, rum, sake, spirits [beverages], tequila, vodka, whisky, wine, alcoholic energy drinks, alcoholic punches, blended whisky, bourbon whiskey, calvados, carbonated alcoholic beverages, distilled beverages and spirits, flavoured spirits, grappa, liqueurs containing cream, low alcoholic drinks, low alcoholic wine, malt whisky, mulled wines, port, port wines, rum punch, sangria, schnapps, sherry, sparkling wines, tequila, vermouth, alcoholic tea-based beverages, alcoholic coffee-based beverages; provision of information to customers and advice or assistance in the selection of goods brought together as above.

Class 43: Services for the provision of food and drink; provision of facilities for the consumption of food and beverages; temporary accommodation; cafes; restaurants; brasseries; snack bars; self-service restaurants; restaurants; canteens; cafes; cafeterias; coffee shops; bars; wine bars; cocktail bars; tea rooms; delicatessens; fast food services; preparation of food and drink; catering services; provision of venues for parties, balls, weddings and events; hotel reservations; crèche services; information, advisory and consultancy services relating to the aforesaid services; preparation of carry-out foods for consumption off the premises; catering services provided online from a computer database or from the Internet; information relating to food, drink and catering services provided online from a computer database or from the Internet.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the applicant’s and opponent’s lists of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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 machines for use in the treatment, preparation, mixing or dispensing of foods and drinks; electric coffee grinders, electric coffee mills, coffee extracting machines; automatic vending machines; power-operated coffee grinders are various apparatus and machines whereas the opponent’s goods in Class 30 belong to the food and drinks industry. Consequently, the nature of these goods is different. Although the goods applied for may be related to coffee, covered by the opponent’s goods, these sets of goods are usually not marketed by the same undertakings and have different method of use and purposes (for example, the purpose of coffee is to quench thirst or act as a stimulant, the purpose of coffee grinders and mills is to crush and grind coffee beans, and the purpose of vending machines is to dispense/sell goods). Contrary to the opponent’s claims, the complementary relationship between these goods is not sufficiently pronounced in the sense that one is essential or important for the use of the other so that consumers may think that the responsibility for the manufacture of such products lies with the same undertaking. In the present case, although one may be essential or important for the use of the other or these goods could be used in combination, this is not sufficient for a finding of similarity, since the contested goods usually do not have the same commercial origin and distribution channels as the opponent’s goods. The relevant public for a vending machine is not the same as a consumer obtaining a drink through a vending machine and consumers are aware that producers of goods in Class 30 do not normally produce machines in Class 7. Accordingly, for all the above mentioned reasons these sets of goods are considered dissimilar.

Contested goods in Class 9

The contested computer application software for mobile devices and mobile phones, namely, software for consumers to access menu data and store location information; electronic timers and counters; magnetic encoders; identity cards; cash cards; recorded media including computer software; educational software; educational programmes in the form of software; thermometers; scales; safety covers for data processing electrical equipment and apparatus; safety alarms; protective and safety equipment; monitoring instruments; mouse pads are dissimilar to the opponent’s goods in Class 30. These sets of goods belong to entirely different industries (software, safety, monitoring and protective instruments, cards, etc. versus beverage industry). These goods differ in all of the relevant Canon criteria, as they differ in nature, purpose, method of use, producers, distribution channels and relevant public. They are neither in competition, nor complementary.

Contested goods in Class 11

The contested coffee machines, electric coffee making machines, machines for cooking, heating or warming of food or drink, electrical apparatus for making or brewing coffee, espresso, tea, cocoa or chocolate beverages; coffee roaster; automatic installations for making coffee; electric coffee filters are all apparatus the use of which could be linked to the consumption of the opponent’s coffee, tea, cocoa or chocolate beverages as they are used for and/or necessary for the preparation of these beverages. However, contrary to the opponent’s arguments (backed with references to a decision of the Board of Appeal), the Opposition Division does not consider that these contested goods and the opponent’s goods in Class 30 are usually marketed by the same undertakings or that they have the same purpose. As mentioned, the purpose of the opponent’s beverages is to quench thirst or act as a stimulant, etc. while the purpose of, for example, a coffee roaster is to roast coffee beans, and the purpose of coffee filters is to filter coffee. These goods do not have the same nature. Thus, even if it was to be considered that they could be complementary or used in combination, this is not sufficient for a finding of similarity, since it is not considered that the goods have the same usual commercial origin.

The remaining contested goods apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes are even further removed from the opponent’s goods in Class 30. These goods have no relevant connection with the opponent’s beverages and related preparations (in particular, coffee, tea, cocoa and chocolate drinks and preparations). They differ in nature (items for lighting, heating, cooking, etc. vs. beverages and related preparations). Their purpose and method of use are not the same. The opponent argues that these goods are all kitchen utensils and are in some way connected to coffee. Nevertheless, these sets of goods do not have the same producers, providers or distribution channels and are neither in competition, nor complementary. Therefore, in view of the abovementioned reasoning, the contested goods in this class are considered dissimilar to the opponent’s goods.

Contested goods in Class 16

The contested coffee filters of paper are linked to the consumption of coffee, as they are used in the preparation of this beverage. However, these goods do not have the same nature, purpose and method of use. They are normally produced by different undertakings and although they may be used in combination with the opponent’s goods this is not sufficient for a finding of similarity, as their trade origin is different.

The remaining contested paper bags, wrapping and packaging materials; instructional and teaching materials; paper serviettes are also dissimilar to all the opponent’s goods in Class 30. These goods have no relevant link, as they differ in nature, purpose and method of use. They do not have the same producers or distribution channels and are neither in competition, nor complementary.

Contested goods in Class 21

The contested goods in this class cover, inter alia, various tools used for cooking, storing or for general household purposes, goods used for combing, cleaning and polishing, glass and finished glassware items, products that include objects made of ceramic material or of baked clay, utensils for kitchen use, etc. These goods differ in nature and purpose from the opponent’s specific beverages and related preparations. The conflicting goods have different producers. Although the relevant public may be the average general consumer, these sets of goods do not belong to the same industry and have different distribution channels. Furthermore, the conflicting goods are not complementary or in competition either. Therefore, it is concluded that the contested household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; non-electric appliances for making soft drinks; kitchenware, tableware and cookware; collapsible cup carriers and caddies; non-paper coasters; insulated vacuum bottles; paper cups are dissimilar to the opponent’s goods.

In relation to the remaining contested goods in this class, namely, non-electric apparatus for making or brewing coffee, espresso, tea, cocoa or chocolate beverages; non-electric grinding and milling apparatus; hand-operated coffee grinders and coffee mills; insulated coffee and beverage cups; reusable coffee filters; coffee cups; tea cups and mugs; non-electric drip coffee makers, non-electric plunger-style coffee makers, it must be noted that in spite of being linked to the consumption and/or preparation of the opponent’s coffee, tea, cocoa or chocolate beverages, they are not similar to all the opponent’s goods. These sets of goods are usually marketed by different undertakings and differ in intended purpose and method of use. Furthermore, these goods do not have the same nature. Thus, even if it was to be considered that they could be complementary or used in combination, this is not sufficient for a finding of similarity, since it is not considered that the goods have the same usual commercial origin. Therefore, they are dissimilar.

Contested goods in Class 30

The contested coffee, tea, cocoa and artificial coffee; coffee, cocoa, tea (herbal and non-herbal); ready-to-drink coffee are identically contained in both lists of goods (including synonyms).

The contested chocolate items are similar to the opponent’s cocoa. This is because they have the same nature (items of cacao beans) and can coincide in producers, relevant public and distribution channels.

The contested powdered chocolate and vanilla, flavouring syrups to add to beverages; bases for making milkshakes [flavourings] are similar to low degree to the opponent’s coffee-based, tea-based, chocolate-based and cocoa-based beverages, including mixtures and preparations therefore. This is because they may have the same relevant public, method of use and purpose, such as to serve as preparations to be added to flavour beverages.

The remaining contested goods, namely rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt and pepper; mustard; vinegar, sauces (condiments); spices; ice; baked goods, pastries and breads, and ready-to-make mixes of the same; sandwiches; pizzas; pasta and pasta products; cakes; ketchup and sauces; preparations for making sauces; spices; vinegar, chutney; custard powder; salad dressings; prepared meals; mousses and puddings; confectionery items; hot and cold ready-to-eat fruit and whole grain based cereal cover diverse foodstuffs such as foods seasonings, frozen sweet foods and cooling ice, rice, various types of pasta or related products, articles of food for a light meal or snack, cooked sweet foods, etc. In spite of the fact that these goods and the opponent’s goods are all generally foodstuffs, their producers, specific nature, method of use and purpose are quite different. Also, none of the contested goods serve as a main ingredient to prepare the opponent’s goods. These goods are neither in competition, nor complementary. Therefore, they are dissimilar.

Contested goods in Class 32

The contested non-alcoholic beverages are similar to the opponent’s coffee, coffee-based, tea-based beverages. The term non-alcoholic beverages includes a variety of drinks such as fruit drinks, fruit juices, mineral and aerated waters, etc. These goods can coincide in producer, relevant public and distribution channels with the opponent’s goods. Furthermore, these sets of goods are in competition. For the same reasons, it is considered that the following contested non-alcoholic drinks are similar to the opponent’s coffee, coffee-based, tea-based beverages, namely, the contested fruit beverages and fruit juices; mineral and aerated waters; aerated water; beverages containing vitamins; beverages enriched with added vitamins; whey beverages; non-alcoholic ciders; non-alcohol wines; non-alcoholic aperitifs; non-alcoholic cocktails; energy drinks; energy drinks containing caffeine; flavoured carbonated beverages; fruit juice; gurana drinks; honey-based beverages; isotonic beverages; isotonic drinks; hypertonic and hypotonic drinks (for use and/or as required by athletes); sports drinks; non-alcoholic malt free beverages; non-dairy milk; non-alcoholic aloe vera drinks; smoothies (non-alcoholic fruit beverages); tomato juice [beverage]; table waters; waters; frozen fruit beverages and frozen fruit-based beverages; non-alcoholic beverages flavoured with tea; non-alcoholic beverages flavoured with coffee.

The contested syrups and other preparations for making beverages; effervescent (sherbet) tablets and effervescent powders for drinks; syrups for making beverages and fruit flavoured drinks are similar to a low degree to the opponent’s coffee. These sets of goods can coincide in relevant public, distribution channels and method of use.

The remaining contested goods, namely beers; ale; lager; porter; shandy; stout; kvass; low-alcohol beer; vegetable juices; malt wort; malt beer; ginger beer; coffee-flavoured beers; coffee-flavoured ales are not similar to the opponent’s goods. This is because they differ in their specific nature and method of production. These goods are not normally manufactured by the same producers and are found in different areas of supermarkets. They are not complementary or in direct competition with the opponent’ goods either. Although the contested beer and ale may be coffee-flavoured, this is insufficient for finding similarity between these goods. The contested goods belong to the brewery sector, which is quite distinct from the sector of coffee, tea, cocoa and chocolate non-alcoholic beverages. The producers of these goods are different; they are not found in the same sections of supermarkets or retail stores and are not in competition. Furthermore, the opponent’s goods do not serve as a main ingredient to prepare the contested goods. Consequently, these sets of goods are dissimilar.

Contested goods in Class 33

The contested goods in this class are different kinds of alcoholic beverages and related alcoholic essences and extracts. These goods differ from all the opponent’s goods in Class 30, which cover, basically, coffee, tea, cocoa and chocolate drinks and preparations. These sets of goods differ in nature (alcoholic vs. non-alcoholic beverages and preparations). Their specific purpose is not the same and they do not have the same producers. These goods are not in competition or complementary either. Although some of the contested goods may contain tea or coffee, this is not sufficient for finding similarity with the opponent’s goods. As mentioned, these goods differ in nature, methods of production and intended use. They normally have different points of sale, producers and are not in competition. Therefore, contested goods are dissimilar to the opponent’s goods.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services in Class 35.

Therefore, in view of the above, the contested retail and wholesale services in relation to drink (a broad term covering beverages such as coffee and tea), coffee, tea, cocoa and artificial coffee, ready-to-drink coffee; the bringing together, for the benefit of others, enabling customers to conveniently view and purchase all of these goods from a retail shop, namely, coffee, unroasted coffee, artificial coffee, tea, cocoa, cocoa-based beverages, chocolate- based beverages, cold tea are similar to a low degree to the opponent’s coffee; tea; cocoa; artificial coffee; non-alcoholic coffee, tea, cocoa and chocolate beverages; coffee-based, tea-based, chocolate-based and cocoa-based beverages in Class 30.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical (as seen above). This condition is not fulfilled in the present case with regard to the remaining contested wholesale, retail and retail-related services since the goods at issue are not identical.

Therefore, the remaining contested wholesale, retail and retail shop services, namely

retail and wholesale services in relation to food, coffee grinders, coffee mills, coffee extracting machines, automatic vending machines, power-operated coffee grinders, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, coffee machines, electric coffee making machines, machines for cooking, heating or warming of food or drink, electrical apparatus for making or brewing coffee, espresso, tea, cocoa or chocolate beverages, coffee roaster, automatic installations for making coffee, electric coffee filters, coffee filters of paper, paper cups, paper bags, wrapping and packaging materials, instructional and teaching materials, paper serviettes, household or kitchen utensils and containers, glassware, porcelain and earthenware, utensils and containers, non- electric apparatus for making or brewing coffee, espresso, tea, cocoa or chocolate beverages, kitchenware, tableware and cookware, non-electric grinding and milling apparatus, hand-operated coffee grinders and coffee mills, insulated coffee and beverage cups, reusable coffee filters, collapsible cup carriers and caddies, non-paper coasters, insulated vacuum bottles, coffee cups, tea cups and mugs, non-electric drip coffee makers, non-electric plunger-style coffee makers, rice, tapioca and sago, flour and preparations made from cereals, bread, pastry and confectionery, ices, sugar, honey, treacle, yeast, baking-powder, salt and pepper, mustard, vinegar, sauces (condiments), spices, ice, powdered chocolate and vanilla, flavouring syrups to add to beverages, baked goods, pastries and breads (and ready-to-make mixes of the same), sandwiches, pizzas, pasta and pasta products, cakes, ketchup and sauces, preparations for making sauces, spices, vinegar, chutney, custard powder, salad dressings, prepared meals, mousses and puddings, chocolate and confectionery items, hot and cold ready-to-eat fruit and whole grain based cereal, milkshakes; the bringing together, for the benefit of others, enabling customers to conveniently view and purchase all of these goods from a retail shop, namely, automatic vending machines, grinding machines, filtering machines, brewing machines, cutting machines, filling machines, blending machines, mixing machines, handheld tools (not-hand operated), food and beverage processing and preparation equipment, electric coffee grinders, electric coffee mills, coffee extracting machines, power-operated coffee grinders, aerated beverage making machines, electric fruit presses, electric fruit squeezers, machines for preparing beverages, business software applications, coffee machines, electric coffee making machines, machines for cooking, heating or warming of food or drink, electrical apparatus for making or brewing coffee, espresso, tea, cocoa or chocolate beverages, electric beverage heaters for domestic or commercial use, coffee roasters, automatic installations for making coffee, electric coffee filters, water filters, water filtration and purification units and replacement cartridges and filters thereof, electric kettles, ice machines and apparatus, cooling appliances and installations, paper, cardboard, printed matter, bookbinding material, photographs, disposable paper products, coffee filters of paper, paper bags, wrapping and packaging materials, instructional and teaching materials, paper serviettes, absorbent paper, bathroom tissue, bibs of paper, coasters of paper or cardboard, printed forms, savings stamps, glassware, porcelain, earthenware, nonelectric apparatus for making or brewing espresso, non-electric apparatus for making or brewing tea, non-electric apparatus for making or brewing cocoa, non-electric apparatus for making or brewing chocolate beverages, kitchenware, tableware, cookware, non- electric grinding and milling apparatus, hand-operated coffee grinders and coffee mills, insulated coffee and beverage cups, reusable coffee filters, collapsible cup carriers and caddies, coffee services [tableware], non-electric coffee-pots, non- paper coasters, insulated vacuum bottles, coffee cups, tea cups and mugs, non-electric drip coffee makers, decorative storage containers for food, lunch boxes, tea infusers, tea pots, tea strainers, paper cups, nonelectric blenders for household purposes, non-electric coffee filters, non-electric cooking utensils, heat-insulated containers, glasses, drinking vessels, coffee creamer, milk-based beverages containing coffee, vinegar, waffles, wheat flour, wheat germ for human consumption, yeast, confectionery, non-medicated confectionery, frozen confectionery, sugar confectionery, chocolate, chocolate confections, confectionery in frozen form, confectionery bars, lozenges, pastilles, sweets, ice lollies, chocolates, biscuits, cakes, pastries, wafers, snack foods, ice cream and ice cream products, chilled and frozen confections and desserts, syrups, beers, mineral waters, aerated waters, non-alcoholic beverages, fruit beverages, fruit juices, syrups, preparations for making beverages, aerated water, ale, lager, porter, shandy, stout, kvass, low-alcohol beer, non-alcoholic ciders, non-alcohol wines, non-alcoholic aperitifs, beverages containing vitamins, beverages enriched with added vitamins, Whey beverages, non-alcoholic cocktails, energy drinks, energy drinks containing caffeine, flavoured carbonated beverages, fruit juice, gurana drinks, honey-based beverages, isotonic beverages, isotonic drinks, hypertonic and hypotonic drinks (for use and/or as required by athletes), sports drinks, non-alcoholic malt free beverages, non-dairy milk, non-alcoholic aloe vera drinks, Table waters, Tomato juice [beverage], Vegetable juices, Waters, effervescent (sherbet) tablets and effervescent powders for drinks, smoothies (non-alcoholic fruit beverages), malt wort, malt beer, ginger beer, syrups for making beverages and fruit flavoured drinks, frozen fruit beverages and frozen fruit-based beverages, non-alcoholic flavoured with tea, non-alcoholic flavoured with coffee, coffee-flavoured beers, coffee-flavoured ales, alcoholic beverages, alcoholic beverages containing fruit, alcoholic essences, alcoholic extracts, aperitifs, bitters, brandy, cachaca, calvados, cream liqueurs, cider, cocktails, curacao, digesters [liqueurs and spirits], distilled beverages, alcoholic fruit extracts, gin, grappa, hydromel [mead], kirsch, liqueurs, nira [sugarcane-based alcoholic beverage], peppermint liqueurs, perry, piquette, premixed alcoholic beverages (other than beer-based), rice alcohol, rum, sake, spirits [beverages], tequila, vodka, whisky, wine, alcoholic energy drinks, alcoholic punches, blended whisky, bourbon whiskey, calvados, carbonated alcoholic beverages, distilled beverages and spirits, flavoured spirits, grappa, liqueurs containing cream, low alcoholic drinks, low alcoholic wine, malt whisky, mulled wines, port, port wines, rum punch, sangria, schnapps, sherry, sparkling wines, tequila, vermouth, alcoholic tea-based beverages, alcoholic coffee-based beverages are dissimilar to all of the opponent’s goods in Class 30. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as retail store services, wholesale services, internet shopping, etc.

The contested advertising; organisation of trade shows; advertising; business management; business administration; office functions; organisation, operation and supervision of loyalty schemes and incentive schemes; organisation, operation and supervision of sales incentive schemes; on-line administration and supervision of a discount schemes; business information; advisory services for business management; provision of information to customers and advice or assistance in the selection of goods brought together as above are dissimilar to all the opponent’s goods in Class 30. In general, the contested services are rendered by companies specialised in the specific field such as advertising specialists, business administration and management consultants, marketing specialists, etc. The earlier trade mark registrations cover beverages for human consumption. The contested advertising, marketing, business information and business management consultancy and information and advisory services are clearly different in nature and purpose from the opponent’s goods. Furthermore, their origin, method of use, distribution channels, consumers and distribution channels do not coincide and they are neither complementary nor in competition with one another.

Contested services in Classes 38, 39, 41 and 42

The contested services in these classes cover provision of access to internet services (Class 38), foods and drinks delivery services (Class 39) and services in Class 41 (entertainment, education, training, sporting activities, etc.) and Class 42 (design services). The contested services are different in nature and purpose from the opponent’s goods. The fact that the contested telecommunications, delivery, design, training and education, etc. services may be provided ‘in relation to drinks, tea, coffee, restaurants, coffee shops, cafés, etc.’ and that the opponent’s goods in Class 30 are (related to) tea and coffee products is not sufficient to find a similarity between them. As mentioned, the goods and services compared differ in nature and purpose. Furthermore, their method of use, their distribution channels, producers/providers and relevant public do not coincide and they are neither complementary nor in competition with one another. The fact that the subject matter of the services and the goods at stake may be similar/the same is not a relevant factor for finding a similarity and is not a reason to consider these goods and services complementary. Contrary to the arguments of the opponent, these goods and services do not have complementary relation, as there is no close connection between them in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking. Their usual origin and/or distribution channels are so distinct that the relevant public will not attribute the same origin to them. Therefore, they are dissimilar.

Contested services in Class 43

The contested services for the provision of food and drink; provision of facilities for the consumption of food and beverages; cafes; restaurants; brasseries; snack bars; self-service restaurants; restaurants; canteens; cafes; cafeterias; coffee shops; bars; wine bars; cocktail bars; tea rooms; delicatessens; fast food services; preparation of food and drink; catering services; information, advisory and consultancy services relating to the aforesaid services; preparation of carry-out foods for consumption off the premises; catering services provided online from a computer database or from the Internet are services intended to serve food and drinks directly for consumption. The mere fact that food and drinks are consumed in a restaurant is not sufficient reason to find similarity between them (judgment of 09/03/2005, T-33/03, Hai, EU:T:2005:89, § 45 and decision of 20/10/2011, R 1976/2010-4, THAI SPA / SPA et al., § 24-26).

Nevertheless, in certain situations these goods and services can be complementary (judgments of 17/03/2015, T-611/11, Manea Spa, EU:T:2015:152, § 52; 15/02/2011, T-213/09, Yorma’s, EU:T:2011:37, § 46). As hinted above, goods and services are complementary if one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking.

The mere fact that food and/or drinks are essential to the services of restaurants, bars, cafeterias, etc. does not in itself lead consumers to think that responsibility for the production of those goods and provision of those services lies with the same undertaking (e.g. salt in restaurants).

On the other hand, consumers may think that responsibility lies with the same undertaking if the market reality is that the provision of food and drinks and the manufacture of such goods are commonly offered by the same undertaking under the same trade mark (e.g. coffee in their coffee shops, ice cream in their ice cream parlours, beer in pubs). Therefore, in the present case and for the reasons mentioned above, it is not excluded that the consumers may establish a link between the contested services and the opponent’s coffee, tea in Class 30. Consequently, there is a low degree of similarity between these goods and services, as they can coincide in producers/ providers and distribution channels. Furthermore, they are complementary.

The contested temporary accommodation; provision of venues for parties, balls, weddings and events; hotel reservations; crèche services; information, advisory and consultancy services relating to the aforesaid services; information relating to food, drink and catering services provided online from a computer database or from the Internet are services for providing accommodation, events venues, hotel reservations, day care and information services. These services are dissimilar to the opponent’s goods in Class 30. The nature, purpose and method of use of these services and goods are different. They do not have the same trade origin, distribution channels and they are not in competition. Therefore, they are dissimilar.

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 identical or similar to varying degrees are directed at the public at large. In view of the nature of these goods and services, as well as the fact that some are relatively inexpensive and mass consumption goods and services, it is considered that the level of attention of the relevant public may vary from low to average.

The signs

ESPRESSO ARTIGIANO

Earlier trade marks

Contested sign

The relevant territory is Austria, Benelux, France and Germany.

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 earlier trade marks are identical: a word mark consisting of two verbal elements ‘ESPRESSO ARTIGIANO’. The contested sign is figurative and consists of two grey circles resembling a label with the letter ‘A’ placed centrally in the middle and the words ‘ARTIGIANO’ and ‘EAT & DRINK . WORK & PLAY’ appearing in smaller letters, in a standard script along the upper and the lower part of the circular label.

The word ‘artigiano’ included in both signs has no meaning in the relevant territories and is, therefore, inherently distinctive. The word ‘espresso’ included in the beginning of the earlier mark will be widely associated by all the members of the relevant public with ‘a type of coffee’ (for example, espresso in German and Dutch and expresso in French) or ‘a bar’ (‘Espresso bar’ in German). Bearing in mind that some of the relevant goods are coffee and coffee-related, this element is non-distinctive for a part of the goods, namely for coffee; coffee extracts; coffee substitutes; coffee-based beverages, including mixtures and preparations therefore; mixtures for coffee-containing beverages; non-alcoholic coffee beverages; non-alcoholic, ready-to-drink coffee. As regards the remaining relevant goods, although the word ‘espresso’ has no such descriptive meaning, bearing in mind that tea, cocoa and chocolate beverages are often offered alongside coffee, it is considered that the word ‘espresso’ will possibly be seen as less important as a trade identifier than the meaningless word ‘artigiano’ that follows it.

The letter ‘A’ in the contested sign has no specific meaning in relation to the relevant goods and services and is thus inherently distinctive. It may be seen as the first letter of the word ‘ARTIGIANO’ placed in smaller script above it. The English words ‘EAT & DRINK . WORK & PLAY’ appearing along the lower part of the circular label will be understood by at least part of the relevant public, namely the part of the public with some knowledge of English. This is especially the case of the relevant public in the Netherlands, but not necessarily only in that territory, as English is taught in all the relevant countries and at least a part of the relevant population has a basic understanding of English. This is line with the Court’s finding that there is at least a basic understanding of the English language by the general public in the Scandinavian countries, the Netherlands and Finland (judgment of 26/11/2008, T-435/07, New Look, EU:T:2008:534, § 23). Consequently, the English-speaking part of the public will understand the meaning of these phrases. Bearing in mind the nature of the relevant goods and services (drinks and provision of food and drinks sector), it is considered that ‘EAT & DRINK’ is not particularly distinctive. As regards the word combination ‘WORK & PLAY’ that follows it, it will not be seen as particularly distinctive either in view of its banal and purely promotional character. Therefore, these word combinations are less distinctive than the ‘A ARTIGIANO’ verbal elements at least in relation to the English-speaking part of the public. For the remaining part of the public, for which these elements have no specific descriptive, allusive laudatory or otherwise weak meaning, their inherent distinctive character is normal.

As regards the figurative elements in the contested sign, it must be mentioned that, in the context of the relevant goods and services, they form a label, which is a commonplace element. Therefore, the word elements are more distinctive than figurative elements of the contested sign. Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

The earlier sign is a word mark and as such has no element(s) that could be considered clearly more dominant (visually eye-catching) than other elements.

In relation to the contested sign, the letter ‘A’ placed in a central position and in a larger script is considered the dominant verbal element, as it the most eye-catching and overshadows the remaining elements. Nevertheless, as mentioned above, it is likely to be seen as the beginning letter of the smaller word ‘ARTIGIANO’ placed above it.

Visually, the signs coincide in the word ‘ARTIGIANO’. It forms the second and the more distinctive verbal element of the earlier mark. Although it is preceded by the relatively long word ‘espresso’, this element is non-distinctive, or at least less important, than the word ‘ARTIGIANO’. As regards the contested sign, it is figurative and its layout is much more complex than the two-word earlier mark. The coinciding word ‘ARTIGIANO’ is distinctive but is not the dominant element in the contested sign. Nevertheless, in spite of its size, it is an important trade identifier within the contested sign and has an independent distinctive role therein. This is because the remaining verbal elements are either equally, or less distinctive. As mentioned above, the figurative elements are quite commonplace and less important. Also, the dominant element in the contested sign, in spite of being inherently distinctive, may be perceived as an abbreviation and, thus, somehow subordinate in relation to the word ‘ARTIGIANO’.

Consequently, in view of all these findings, taking into account the distinctive and dominant elements of the signs and their respective weight, it is concluded that the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the verbal element ‘ARTIGIANO’ and differs in the sound of the word ‘espresso’ in the earlier mark and the remaining verbal elements of the contested sign. However, as already mentioned the beginning word of the earlier mark is less distinctive. Furthermore, bearing in mind the structure of the contested sign, as well as its layout and the distinctive/dominant elements therein, it is quite likely that the contested sign is aurally referred to only by the verbal elements ‘A’ and ‘ARTIGIANO’ (or only as ‘ARTIGIANO’). This is especially the case as regards the English-speaking part of the public who will not attribute much weight to the verbal elements ‘EAT & DRINK . WORK & PLAY’ and may not pronounce them. As for the remaining public, it is also likely that they will only refer to the contested sign as ‘A ARTIGIANO’ or only as ‘ARTIGIANO’, as the ‘A’ may be perceived as its abbreviation and because the remaining verbal elements are rather long and appear on the bottom.

Therefore, in view of the foregoing, the signs are aurally similar to at least an average degree, especially as regards the English-speaking public which will certainly attribute less weight to the words ‘EAT & DRINK – WORK & PLAY’ in the contested sign.

The concepts of the signs have been defined above. As mentioned, the earlier sign will be associated with the concept of ‘espresso’. Nevertheless, as this element is non-distinctive or not as important as the other element in the earlier mark, this element has a restricted conceptual impact. In relation to the contested sign, it contains the concept of the letter ‘A’ and, as regards the English-speaking part of the public the concepts of the the words ‘EAT & DRINK – WORK & PLAY’. Therefore, since the signs ill be associated with different meanings, they are not conceptually similar.

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

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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

Global assessment, other arguments and conclusion

The contested goods and services are partly identical and similar and partly dissimilar to the opponent’s goods. The relevant goods and services are directed at the public at large and the level of attention may vary from low to average.

The signs are visually similar to a low degree and aurally similar to at least an average degree. The signs are not conceptually similar.

The similarities between the signs are on account of the common and normally distinctive element ‘ARTIGIANO’, which constitutes the most distinctive element of the earlier mark and an element with an independent distinctive role within the contested sign. While it is indeed true that the signs differ in certain aspects, especially from a conceptual point of view, this difference is not of decisive importance. As follows from case law, two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects (judgment of 23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30). The coincidence must be, therefore, ‘relevant’ from the perspective of the consumer who usually perceives a mark as a whole and does not proceed to analyse its various details (judgment of 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

In the present case, the coincidence between the signs is in the distinctive element ‘ARTIGIANO’, which is a ‘relevant’ coincidence from the perspective of the consumer – this element is the most distinctive element of the earlier mark and an element with an independent distinctive role within the contested sign.

Bearing in mind that the 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), as well as the fact that the level of attention may vary from low to average, it is considered that there is a risk of likelihood of confusion/association between the marks even in relation to goods and services that are similar to only a low degree. This is because the coinciding element in the signs plays an independent distinctive role in both signs. It is conceivable that the relevant consumer will perceive the mark applied for 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). Therefore, consumers could be led to believe that the owner of the earlier trade mark has launched a new line of goods or services designated by the trade mark applied for.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s international trade mark registration No 1 244 388 designating Austria, Benelux and France and German trade mark registration No 302 014 053 936.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods and 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 goods and services cannot be successful.

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

Marzena MACIAK

Liliya YORDANOVA

Gueorgui IVANOV

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.

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