OPPOSITION No B 2 002 429

Novadelta – Comércio e Indústria de Cafés, S.A., Av. Infante D. Henríque, 151-A

1950-406 Lisboa, Portugal (opponent), represented by Garrigues IP, Unipessoal LDA., Avenida da República, 25 – 1º, 1050-186 Lisboa, Portugal (professional representative)

a g a i n s t

TdeltaS Limited, 30 Upper Street, Thame OX9 3EZ, United Kingdom (applicant), represented by Bawden & Associates, 4 The Gatehouse, 2 High Street, Harpenden, Hertfordshire AL5 2TH, United Kingdom (professional representative).

On 01/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 002 429 is upheld for all the contested goods, namely

Class 29:         Foodstuffs of animal origin, milk products, comestible vegetable processed products, any other comestible horticultural processed products.

Class 30:         Foodstuffs of plant origin and preparations made from them, ices or non-alcoholic drinks having a coffee, tea or cocoa base; cereal preparations; energy ices; flavourings for foodstuffs, for ices or for drinks.

Class 32:         Non-alcoholic drinks and gels other than milk products and those having a coffee, tea or cocoa base; beers; fruit drinks and fruit juices; syrups and other preparations for making non-alcoholic drinks other than milk products and those having a coffee, tea or cocoa base; energy drinks; non-alcoholic drinks, gels or beverages containing ketone body esters in particular hydroxybutyrates, namely energy drinks.

2.        European Union trade mark application No 10 258 961 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 10 258 961, namely against all the goods in Classes 29, 30 and 32. The opposition is based on, inter alia, European Union trade mark registration No 9 518 572. The opponent invoked Article 8(1)(a) and (b), 8(5) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 9 518 572.

1. The goods and services

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

Class 11: Coffee-makers, coffee pots and coffee percolators, electric.

Class 30: Coffee, coffee extracts, coffee-based preparations and beverages; Artificial coffee and artificial coffee extracts; Artificial coffee-based preparations and beverages; Chicory (coffee subsitute), tea, tea extracts and tea-based preparations and beverages; Cocoa and cocoa-based preparations and beverages; Chocolate and chocolate based beverages; All the aforesaid goods presented and/or distributed in capsules, pastilles and/or other kinds of packaging, in particular sachets; Chocolate products; Pralines, sugar (in the form of powder, granules or cubes); Natural sweetener; Confectionery, chewing gum, not for medical purposes and caramels; Confectionery sugar.

Class 43: Hotels, cafeteria services, bar services, restaurant services, provision of meals to local authorities and canteens.

The contested goods are the following:

Class 29: Foodstuffs of animal origin, milk products, comestible vegetable processed products, any other comestible horticultural processed products.

Class 30: Foodstuffs of plant origin and preparations made from them, ices or non-alcoholic drinks having a coffee, tea or cocoa base; cereal preparations; energy ices; flavourings for foodstuffs, for ices or for drinks.

Class 32: Non-alcoholic drinks and gels other than milk products and those having a coffee, tea or cocoa base; beers; fruit drinks and fruit juices; syrups and other preparations for making non-alcoholic drinks other than milk products and those having a coffee, tea or cocoa base; energy drinks; non-alcoholic drinks, gels or beverages containing ketone body esters in particular hydroxybutyrates, namely energy drinks.

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

The term ‘in particular’, used in the opponent’s list 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 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.

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 29

The provision of meals to local authorities and canteens in Class 43 is similar to a low degree to the contested foodstuffs of animal origin in Class 29 as they can coincide in producer and distribution channels. Furthermore they are complementary.

The contested milk products are similar to the opponent’s goods Coffee; all the aforesaid goods presented and/or distributed in capsules, pastilles and/or other kinds of packaging, in particular sachets in Class 30 as they can coincide in producer, end user and distribution channels. Furthermore they are in competition.

The provision of meals to local authorities and canteens in Class 43 is similar to a low degree to the contested goods comestible vegetable processed products, any other comestible horticultural processed products in Class 29 as they can coincide in producer and distribution channels. Furthermore they are complementary.

Contested goods in Class 30

The contested cereal preparations; foodstuffs of plant origin and preparations made from them are similar to the opponent’s goods confectionery as they have the same purpose. They can coincide in producer, end user and distribution channels. Furthermore they are in competition.

The contested energy ices; ices having a coffee, tea or cocoa base are similar to a low degree to the opponent’s cafeteria services in Class 43 as they can coincide in producer and distribution channels. Furthermore they are complementary.

The contested flavourings for foodstuffs, for ices or for drinks are similar to coffee; all the aforesaid goods presented and/or distributed in capsules, pastilles and/or other kinds of packaging, in particular sachets as they have the same purpose. They can coincide in method of use.

The contested non-alcoholic drinks having a coffee, tea or cocoa base are identical to the opponent’s coffee-based preparations and beverages, tea-based preparations and beverages and cocoa-based preparations and beverages; All the aforesaid goods presented and/or distributed in capsules, pastilles and/or other kinds of packaging, in particular sachets.

Contested goods in Class 32

The contested goods non-alcoholic drinks and gels other than milk products and those having a coffee, tea or cocoa base; energy drinks; non-alcoholic drinks, gels or beverages containing ketone body esters in particular hydroxybutyrates, namely energy drinks are similar to the opponent’s goods coffee-based preparations and beverages; all the aforesaid goods presented and/or distributed in capsules, pastilles and/or other kinds of packaging, in particular sachets as they can coincide in end user, method of use and distribution channels. Furthermore they are in competition.

The contested beers are similar to a low degree to the opponent’s bar services as they can coincide in producer and distribution channels. Furthermore they are complementary.

The contested fruit drinks and fruit juices are similar to a low degree to the opponent’s restaurant services as they can coincide in producer and distribution channels. Furthermore they are complementary.

The contested syrups and other preparations for making non-alcoholic drinks other than milk products and those having a coffee, tea or cocoa base are similar to a low degree to the opponent’s goods coffee; all the aforesaid goods presented and/or distributed in capsules, pastilles and/or other kinds of packaging, in particular sachets as they can coincide in end user, distribution channels and method of use.

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 found to be identical or similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

DELTA – THE COFFEE OF COFFEES	DeltaGold
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as the United Kingdom, Ireland and Malta as the verbal elements ‘The Coffee of Coffees’ and ‘Gold’ will be understood.

The element ‘Delta’ of both signs will be understood as the ‘fourth letter in the Greek alphabet’ and as ’the more or less triangular tract of alluvial land formed at the mouth of a river’ (see Oxford English Dictionary) by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

The element ‘GOLD’ of the contested sign has a laudatory character. In trade, it is often used to refer to products which are the best of their kind or special in some way. Consequently, upon seeing products bearing the mark ‘DeltaGold’, the relevant public would be inclined to think that the products at issue are part of the premium, top-of-the-range line of ‘Delta’ products; this element is therefore non-distinctive (see by analogy 20/11/2015, R 2984/2014-5, Brooksgold, § 25).

The verbal elements ‘The Coffee of the Coffees’ of the earlier sign will be associated with ‘the best coffee among many other coffees’. Bearing in mind that the relevant goods are foodstuffs and restaurant and bar services, these words are non-distinctive for these goods.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in ‘Delta’. However, they differ in the non-distinctive elements in both signs (The Coffee of Coffees versus – Gold) and the negligible hyphen in the earlier sign. The signs differ in their structures as the earlier mark has five verbal elements while the contested mark is a one word trade mark.

Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in the syllables ‛del-ta’, present identically in both signs. The pronunciation differs in the sound of the letters ’The Coffee of Coffees’ and ’Gold’, which are considered to be non-distinctive in both signs.

Therefore, the signs are highly similar.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘Delta’, included in both signs, will be associated with the meaning explained above. To that extent, the signs are conceptually similar to an average degree. They differ with regard to the non-distinctive elements which also convey a message, which due to their non-distinctive character play a lesser role.

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 and services 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 non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services are identical or similar (to various degrees). The similarities between the signs have been duly established above.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).

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

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

There is a likelihood of confusion because the differences between the signs are confined to non-distinctive or secondary elements and aspects.

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, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 518 572. It follows that the contested trade mark must be rejected for all the contested goods.

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 as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right ‘DELTA – THE COFFEE OF COFFEES’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Articles 8(1)(a) and 8(5) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sigrid DICKMANNS

Lars HELBERT

Claudia MARTINI

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.