OPPOSITION No B 1 980 286

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

Business-Coffee GmbH, Neumarkter Str. 18-20, 81673 München, Germany (applicant), represented by Rechtsanwälte Lintl Renger Partnerschaft mbB, Nymphenburger Str. 20a, 80335 München, Germany (professional representative).

On 04/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 980 286 is partially upheld, namely for the following contested goods and services:

Class 11:  Electric coffee percolators; Coffee capsule machines, Coffee pad machines, fully automatic coffee machines, and parts for the aforesaid machines, included in class 11

Class 30:          Coffee; Coffee capsules, Espresso pads, Coffee in capsules, Coffee-based beverages, Coffee flavourings.

Class 35:         Wholesaling, retailing and mail order services, including on the Internet, relating to foodstuffs and beverages.

Class 43:          Services for providing of food and drink.

2.        European Union trade mark application No 10 321 495 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 some of the goods and services of European Union trade mark application No 10 321 495, namely against all goods in Classes 11 and 30, and against part of the services in Classes 35 and 43.  The opposition is based on Swedish trade mark registration No 356 399. The opponent invoked Article 8(1) (b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, Swedish trade mark No 356 399.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 28/11/2011. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Sweden from 28/11/2006 to 27/11/2011 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 30:        Coffee and coffee products.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 22/08/2013, according to Rule 22(2) EUTMIR, the Office gave the opponent, after prolongation on 21/10/2013, until 22/12/2013 to submit evidence of use of the earlier trade mark. On 23/12/2013, within the time limit (the 22/12/2013 was a Sunday), the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• Affidavit of 26/10/2012 of Ms Hedström, brand manager of the opponent in Sweden, according to whom the opposition trade mark was being used under licence by or with the consent of the opponent during the period of relevance here.
• 16 invoices to large Swedish supermarket chains from the period mainly between 2010 and 2011, but also from 2007, according to which inter alia several hundreds of units of ‘Presso’ coffee (1 unit = 12 packs of 500 g) were sold in the respective period.
• A chart with an overview of the total number of 500g packs (units) sold in Sweden during the last five years preceding the publication of the contested application. Cumulative turnover in 2010 was 1.034.000 units and in 2011 931.000 units. According to the same chart the opponent sold ‘PRESSO’ in 2010 for a total amount of SEK 28,373,200 and SEK 31,781,600 in 2011.
• Samples of materials provided to customers for their marketing efforts towards their customers.
• A study of the consumption of i.a. coffee in Sweden of June 2010, published by the Swedish Chambers of Commerce, according to which the opponent accounts for 20% of the Swedish coffee market.
• A study of 2010 done by the CBI (Ministry of Foreign Affairs of the Netherlands) where it is stated that the opponent accounts for 22% of the Swedish coffee market.
• Images of packaging of the classic ‘Presso’ coffee product sold in Sweden which correspond, inter alia, to the following image:

• Store displays of PRESSO products made available to retailers by the opponent.
• Dated printouts of archived versions from the opponent’s website from the years 2000 to 2008, presented either in Swedish or Swedish and English   (www.nestle-nordic.com/zoegas, downloadable at www.web.archive.org) and from its ‘Facebook-Fan-Page’ website.

On the translation of the evidence, it should be stated that according to Rule 96(2) EUTMIR, where the language of documents is not the language of the proceedings, the Office may require that a translation be supplied, within a period specified by it. It is therefore left to the discretion of the Office whether the opponent has to submit a translation of the evidence into the language of the proceedings or not, requiring it to balance the interests of both parties; on one hand, the task for one party of having to translate the evidence, and, on the other, the right of the other party to be heard and to defend its interests.

The advertising material including the printouts from the opponent’s website primarily serve to show the nature of use in the course of trade. To this end, it is evident from the images showing an everyday consumer item, namely coffee, that the earlier mark was depicted on the packaging and in the related advertisements. A translation of the further textual elements on the product packaging and description was not required to assess the nature of use. As shown by the applicant’s submissions, pointing out that the product in question is a sort of press coffee, the applicant understood perfectly well what type of product is depicted and in what manner the mark was used in relation thereto. Furthermore, part of the evidence with the corresponding images of the ‘ZOÉGA’s PRESSO’ was also in English, describing this product as a speciality coffee for press brewers. The remaining evidence was also in English, allowing for a better assessment of the relevant content of the untranslated evidence. Therefore, a translation was not required.

The evidence submitted especially the invoices, shows that the place of use is Sweden. This can be inferred from the language of the documents (‘Swedish’), the currency mentioned (‘SEK’) and some addresses in Sweden. Therefore, the evidence relates to the relevant territory.

Almost all of the evidence is dated within the relevant period.

The documents filed provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The opponent proved as well significant sales to large Swedish supermarket chains.

It is evident that the earlier right was used as a trade mark. The fact  that the opponent is using the earlier trade mark ‘PRESSO’ together with its trade mark ‘Zoega’s’ as such is irrelevant to the question of genuine use of the opposition trade mark. As acknowledged in established case law, Union law does not require the opponent to use its earlier mark on its own, independently of any other mark (08/12/2005, T-29/04, Cristal Castellblanch,EU:T:2005:438, § 33-34; 15/06/2015, T-660/11, Polytetraflon, EU:T:2015:387,§ 76).

Instead, it is clear from the evidence submitted that the (registered) earlier Swedish trade mark ‘PRESSO’ was being used jointly but autonomously, as a sub-mark of the opponent’s ‘umbrella or house mark` ‘Zoega’s’. When considering the packaging depicting the ‘ZOÉGAs PRESSO’, it should be noted first that the trade mark ‘ZOÉGAs’ appears on top thereof functioning as a header for the entire packaging. The same presentation/stylisation is repeated in the opponent’s webpage, advertisements and promotional material. The term ‘PRESSO’ underneath on the packaging is written in smaller letters and in a different typeface. Since it is common in the course of trade to depict the independent trade marks in different sizes and typefaces, these clear differences, which emphasize the house mark, indicate that two different marks are used jointly but autonomously. Furthermore, it is common knowledge derived from the practical experience with the marketing of coffee as an everyday consumer item that various sorts of coffees are marketed under the same trade mark (which may be called an umbrella mark or a house mark), together with another trade mark for the specific sort of coffee. Given the wide range of available coffees catering for different tastes, preferences for strengths or origins, etc., such marketing practice enables the consumer to distinguish between the various products whilst relying on the same commercial origin as indicated by the umbrella or house mark. This practice is therefore not only pertinent in the wine sector, as established by the General Court (08.12.2005, T-29/04, Cristal Castellblanch, EU:T:2005:438, § 33), but also applies in the coffee sector.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

The earlier mark must have been used in relation to the goods as registered, namely ‘coffee and coffee products’ in Class 30. As follows from the opponent’s submission and the evidence provided, the earlier mark was used for a type of ground coffee suitable to be used for a French press. According to the principle of partial use, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong (14.07.2005, T-126/03, Aladin, EU:T:2005:288, § 45 et seq.). Taking into account the opponent’s interest in following this usual commercial practice, and that according to the case-law the proprietor of the earlier mark shall not be stripped of all protection for goods which essentially correspond to one another (13.02.2007, T-256/04, Respicur, EU:T:2007:46, § 24), for the purpose of the  present assessment the Opposition Division considers the use at hand to be sufficient to warrant the earlier mark protection for ‘coffee and coffee products’  as forming its own sub-category in Class 30.

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.

1. The goods and services

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

Class 30: Coffee and coffee products

The contested goods and services are the following:

Class 11: Electric coffee percolators; Coffee capsule machines, Coffee pad machines, Fully automatic coffee machines, and parts for the aforesaid machines, included in class 11.

Class 30: Coffee; Coffee capsules, Espresso pads, Coffee in capsules, Coffee-based beverages, Coffee flavourings.

Class 35: Wholesaling, retailing and mail order services, including on the Internet, relating to foodstuffs and beverages, machines and preparation appliances for preparing and manufacturing coffee.

Class 43: Services for providing of food and drink.

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 11

The contested Electric coffee percolators; Coffee capsule machines, Coffee pad machines, Fully automatic coffee machines, and parts for the aforesaid machines, included in class 11 are all machines or their parts which are used to prepare coffee. There is therefore such a close connection between the goods at issue and the earlier goods, namely Coffee and coffee products, that both are essential for the use of the other. Even if those goods are made of different materials, they are complementary in the sense that they serve the same purpose necessarily in collaboration. Furthermore they can have the same producers, distribution channels and end users. It is a fact that is well known within the meaning of the case-law (22/06/2004, T-185/02, Picaro, EU:T:2004:189, § 29) that producers of coffee also sell coffee machines, coffee grinders, coffee filters and coffee pots (and coffee services produced under their control). Therefore these goods are considered to be similar to an average degree.

Contested goods in Class 30

The contested Coffee; Coffee capsules, Espresso pads, Coffee in capsules, Coffee-based beverages are either contained identically in both lists of goods – coffee – or are included in the broad category of the opponent’s coffee products Therefore, they are identical.

The contested Coffee flavourings are syrups and sauces, like for instance caramel sauce, cocoa and treats, which can be added to coffee beverages to give them more or different taste. They can coincide with the opponent’s Coffee and coffee products in end user, distribution channels and method of use. Although the goods in conflict do not serve the same purpose, coffee is their most important ingredient. Therefore these goods are considered similar at least to a low degree.

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, the contested wholesaling, retailing and mail order services, including on the Internet, relating to foodstuffs and beverages, are similar to a low degree to all the opponent’s goods in Class 30, namely coffee and coffee products.

However, the contested wholesaling, retailing and mail order services, including on the Internet, relating to machines and preparation appliances for preparing and manufacturing coffee concerns goods which are not identical to the opponent’s goods in Class 30. Therefore these services are dissimilar to the opponent’s goods.

Contested services in Class 43

The contested services for providing of food and drink are considered similar to a low degree to the opponent’s goods, namely coffee and coffee products (see for instance decision R 1603/2007 of 05/06/2008 or R 690/2006 of 02/02/2007) . Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities. They are complementary goods and services, as the public might believe that the responsibility for the production of the goods and the provision of the services belongs to the same company. This is the case here as the public could believe that a producer of coffee is selling its coffee and related products in its own shops under the same trade mark. They can coincide in distributors and public, as well as in producers and providers (see for instance judgements of 17/03/2015, T-611/11, Manea Spa, EU:T:2015:152, and § 52; of 15/02/2011, T-213/09, Yorma’s, EU:T:2011:37, § 46).

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 identical and/or similar and similar to a low degree are directed at the public at large. The goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves. The degree of attention will vary from low to average, depending on the price of the goods.

 

3. The signs

PRESSO	Luxpresso
Earlier trade mark	Contested sign

The relevant territory is Sweden.

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). Both earlier rights are word marks.

`Presso‘, equally contained in both signs, has no meaning for the relevant public and is, therefore, distinctive.

As regards the contested sign, it is composed of two verbal elements, namely ‘Lux’ and ‘presso’, written as one single word. It should be taken into account that a consumer, perceiving a verbal sign, will break it down into elements which suggests a concrete meaning or which resembles words known to him. In the case at hand, the Swedish-speaking public would perceive the contested mark as being composed of two elements, namely ‘Lux’ and ‘presso’. As explained above, ‘presso’ has no meaning for the Swedish public.

The element ‘Lux’, which is the first three letters of the contested sign ‘Luxpresso’, will however be perceived by the Swedish-speaking consumer as a misspelling of the Swedish word ‘lyx’, referring to luxury. This element will bring to the mind of the relevant public a laudatory meaning in the sense of high quality. Bearing in mind that the goods concerned are coffee and coffee products, this element is therefore considered to be weak for the relevant public in relation to those goods and services. Consequently, this element has only a limited impact when assessing the likelihood of confusion between the marks.

Even if according to the applicant’s submissions the relevant consumers might also perceive ‘Lux’ as referring to the international standard unit of illuminance measuring luminous flux, this would not change the weak character of ‘Lux’ as in terms of descriptiveness it is sufficient that at least one of the possible meanings of a sign or element designates a characteristic of the goods or services concerned. As explained above the Swedish consumers will perceive ‘Lux’ as well as a misspelling of the Swedish word ‘Lyx’ referring to luxury.

Visually and aurally, the signs coincide in the distinctive verbal element ‘PRESSO’, which forms the earlier mark and are the last six letters of the contested sign, ‘Luxpresso’. However, they differ in the weak verbal element ‘Lux’, which is the first three letters of the contested sign.

Therefore, as the entire earlier right is contained in the contested sign, the signs are visually and aurally highly similar.

Conceptually, although the contested mark ‘Luxpresso’ as a whole does not have any meaning for the public in the relevant territory, Swedish-speaking consumers will perceive the weak verbal element ‘Lux’, which is the first three letters of the contested mark, as a misspelling of the word ‘lyx’, referring to high quality. The other sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs 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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

A likelihood of confusion on the part of the public must be assessed globally. Such a global assessment implies some interdependence between the factors taken into account and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19).

For the purpose of the global assessment, the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question and 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; 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 38).

The goods and services at issue target the public at large.

The contested goods and services and the opponent’s goods are partially identical, partially similar to various degrees and partially dissimilar.

The signs are visually and aurally highly similar. They are not conceptually similar.

The only differing element, ‘Lux’, which is the first three letters of the contested sign, is weak, since it will be perceived as a misspelling of the Swedish word ‘lyx’, referring to high quality.

Therefore, considering that the only differences between the signs result from a weak element, taking into account the assumed low to average degree of attention paid in relation to the goods and services at issue and bearing in mind the principle of imperfect recollection, the Opposition Division considers that there is a likelihood of confusion on the part of the public.

According to the case law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) EUTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

Indeed, it is 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).

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 Swedish trade mark registration No 356 399. It follows that the contested trade mark must be rejected for all the contested identical and similar goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Tobias KLEE

Karin KLÜPFEL

Sigrid DICKMANNS

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.