Caffè Gallonero | Decision 2679390 – Trademarkers Legal Blog

OPPOSITION No B 2 679 390

Caffè Nero Group Limited, 3 Neal Street, 2nd Floor, London, WC2H 9PU, United Kingdom (opponent), represented by Fieldfisher LLP, Riverbank House, 2 Swan Lane, London, EC4R 3TT, United Kingdom, (professional representative)

a g a i n s t

Mint& Fizz, via Del Sersimone 3, 05100, Terni, Italy (applicant), represented by Francesca Caricato, Viale delle Rimembranze, 45, 21047, Saronno, Italy (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 679 390 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 949 119. The opponent invoked Articles 8(1)(b), 8(4) and 8(5) EUTMR.

In relation to the Articles 8(1)(b) and 8(5) EUTMR claims the opposition relies upon the following earlier marks:

European Union trade mark registration No 11 885 753 CAFFÈ NERO for goods and services in Classes 11, 21, 30, 35 and 43.

European Union trade mark application No 13 238 019 CAFFÈ NERO for goods and services in Classes 25, 30 and 35.

European Union trade mark application No 13 436 175 for goods and services in Classes 30, 35 and 43.
European Union trade mark registration No 2 133 908 for goods and services in Classes 30 and 42.

European Union trade mark registration No 11 363 215 GREEN CAFFÈ NERO for goods and services in Classes 30, 35 and 43.

United Kingdom trade mark registration No 2 640 730 CAFFÈ NERO for goods and services covering Classes 11, 21, 30, 35 and 43.

United Kingdom trade mark registration No 3 071 633 CAFFÈ NERO for goods and services covering Classes 25, 30 and 35.

Well-known trade mark CAFFÈ NERO for goods and services covering Classes 25, 30, 35 and 43 throughout the European Union.

In relation to the invoked Article 8(4) EUTMR the opponent relies upon:

The non-registered trade mark CAFFÈ NERO, throughout the European Union, for goods and services typically covered by classes 25, 30, 35 and 43.

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

Since 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 UK trade mark registration No 2 640 730 CAFFÈ NERO.

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

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; coffee machines; electric coffee machines; electric percolators; apparatus for making coffee; parts and fittings for all of the aforesaid goods.

Class 21: Household or kitchen utensils and containers; hand operated coffee grinders and coffee mills; collapsible cup carriers and caddies; non-electric plunger-style coffee makers; non-electric apparatus for making or brewing coffee, espresso, tea, cocoa or chocolate beverages; filters; cups and mugs; carriers for cups; caddies for tea, coffee and for cocoa; glassware; dishes; plates; bowls; storage containers; insulated vacuum bottles and jugs; coasters (not of paper); tableware; kitchenware and cookware; non-electric appliances for making soft drinks; insulated coffee and beverage cups (made of plastic and/or ceramics); non-paper reusable coffee filters; non-electric drip coffee makers; non-electric tea kettles, tea infusers, tea pots and tea strainers; parts and fittings for all the aforesaid goods.

Class 30: Tea, coffee, cocoa, sugar, rice, tapioca, sago, flour and preparations made from cereals, biscuits, cookies; bread, pastry and confectionery, chocolate bars, chocolate covered fruits, chocolate covered nuts, chocolate covered coffee beans; ices; honey, treacle, yeast, baking powder; salt, mustard, vinegar, sauces; spices; ice; pasta, cakes, flans and puddings; pastries, sweeteners; flavourings; prepared meals and snacks; prepared meals and snacks, namely meals consisting primarily of pasta or rice; prepared meals consisting primarily of bread, crackers and/or cookies; prepared meals and snacks, namely, sandwiches, pizzas, sandwich wraps and paninis, corn based snacks, chocolate based ready-to-eat snacks; cheese flavoured snacks, namely, corn chips, puffed corn, popcorn, crackers, cheese curls and puffed cheese balls; coffee substitutes; coffee and espresso beverages; beverages made with a base of coffee and/or espresso; coffee based non-alcoholic drinks and soft drinks; ground and whole bean coffee; coffee essences and extracts; herb tea; tea beverages; cocoa and cocoa-based preparations; cocoa beverages; sponges, muffins, scones, pies, and preparations and mixes for making the aforesaid goods; muesli and muesli bars; toasted sandwiches; sauces; syrups, toppings and spreads; vanilla; sherbets and sorbets; flavoured ices and frozen confections; powdered chocolate and vanilla; flavouring syrups to add to beverages; fruit sauces; fillings; porridge; oatmeal.

Class 35: Business management, advertising and administration services relating to cafeteria, restaurant, coffee shop, snack bar and catering services; franchising services relating to cafeteria, restaurant, coffee shop, snack bar and catering services, namely providing business assistance in the establishment and/or operation of restaurants, cafes, coffee houses and snack bars; retail store services connected with coffee, tea, cocoa, packaged and prepared foods, books, kitchenware and crockery; organisation, operation and supervision of incentive schemes to promote the purchase and sale of coffee, tea, cocoa, packaged and prepared foods, books, kitchenware and crockery; loyalty scheme services; information, consultancy and advisory services relating to the aforesaid.

Class 43: Services for providing food and drink; restaurant and catering services; self-service restaurant services; snack bar services; café services; take-away services; coffee bar and coffee house, carry out restaurant, and take out restaurant services; coffee supply services for offices; office coffee supply services; contract food services; food preparation; preparation of carry out foods and beverages; information, advisory and consultancy for all of the aforesaid services.

The contested goods and services are the following:

Class 30: Coffee.

Class 40: Coffee-grinding; coffee roasting and processing.

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 30

The goods coffee is identically contained in both lists of goods.

Contested services in Class 40

The contested coffee-grinding; coffee roasting and processing services are services sought by professional coffee producers, in the form of grinding, roasting and processing. They target professional consumers, namely companies which trade in coffee. The earlier coffee differs in nature since they are products which differ in nature and purpose seems they are everyday products which are consumed by the public at large. The channels of trade do differ and they are not in competition with one another, nor are they complementary. Therefore, they are not similar.

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 (coffee) are directed at the public at large which will be reasonably observant and circumspect.

The signs

CAFFÈ NERO

Earlier trade mark

Contested sign

The relevant territory is the United Kingdom.

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 mark is a word mark, CAFFÈ NERO. The verbal element ‘CAFFÈ’ would be understood by the relevant UK public as a misspelling meaning either coffee or café. Therefore, for the goods in question (coffee), the word CAFFÈ is considered to be of weak distinctive character. With regard to NERO, this has no meaning to the relevant English speaking public, so it is considered to be the more distinctive element of the earlier mark.

With regard to the contested sign, the representation of a cockerel’s head, within a shield shaped device, has an important place within the sign in that it is positioned in the centre and covers at least half of the sign as a whole. Below the device are the words CAFFÈ’ (which is considered to be of weak distinctive character for the goods) and GALLONERO. The latter word is in larger font and has no meaning in relation to the goods in question. Therefore, the device and the word ‘GALLONERO’ are considered to be the two dominant elements within the mark. With regard to the ‘DAL 2015’ element below the cockerel’s head and within the shield device, given the size of font, it is not considered to be a dominant element of the mark particularly since it is likely to be understood as the date and origin of the goods. Lastly, 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).

Visually, the signs coincide in ‘CAFFÈ’ which is considered to be of weak distinctive character. The signs also coincide insofar that they both contain ‘NERO’, however since this element would not be dissected from ‘GALLO’ in the contested sign, they are not considered to be similar. In view of the aforementioned, since the marks only overlap with an element which is considered to be of weak distinctive character, and given the remaining visual differences the marks are considered to be visually similar to a low degree.

Aurally, the earlier trade mark is pronounced as CA/FÈ/NE/RO and the contested sign as CA/FÈ/GA/LLO/NE/RO. The signs coincide in CA/FÈ being the first word but this is considered to be of weak distinctive character. Whilst the element NERO is within GALLONERO, since the latter word will not be dissected they do not sound the same. Neither the device element nor ‘DAL 2015’ in the contested sign are likely to be enunciated. Therefore, the marks are considered to be aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As discussed above, the word CAFFÈ will be understood to mean either coffee or café and is therefore considered to be a weak element. Therefore, the marks are conceptually similar to a low degree.

As the signs have been found similar in a 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.

According to the opponent the earlier trade mark has a reputation throughout the United Kingdom in connection with all of the goods and services for which it is registered, namely:

United Kingdom trade mark registration No. 2 640 730 CAFFÈ NERO

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

Since the contested sign was filed on 22/12/2015 the opponent is required to prove that it has acquired an enhanced degree of distinctive character by this date.

On 11 October 2016, the opponent submitted evidence under cover of a witness statement. The witness statement is from Mr. Michael Ford Deegan who is the Director of Rome Holdco SARL, the Holding company for the opponent. He states that the opponent (formerly known as Caffè Nero Group Plc) was founded in London in 1997 and was listed on the London stock exchange in 2001.

The opponent claims that it has a reputation throughout the European Union and that it is particularly strong in the UK, Ireland, Poland and Cyprus. It claims that the reputation is for all of the goods and services covered by each of the earlier relied upon registration. However, as previously indicated, the assessment shall firstly be made in relation to its UK registration No. 2 640 730.

The opponent makes reference to the various trade mark registrations it holds in Europe and around the world and various domain names which it owns. The existence of domain names and trade mark registrations do not reflect or prove the marketplace position and whether the opponent has the requisite reputation.

The opponent then states that it currently has over 700 stores throughout the UK and around 40 outlets in Poland.

The opponent provides the following worldwide sales figures:

Year ending 31 May	Total sales
2015	£241,332,000
2014	£222,399,000
2013	£204,326,000
2012	£184,566,000
2011	£165,583,000
2010	£153,641,000
2009	£142,205,000

The opponent claims that the ‘vast majority’ of these sales are within the EU but has not provided a breakdown on how they relate to the EU or individual member states.

Exhibit MFD6 comprises of undated photographs of various food and drinks (coffee cups, crisps, chocolate bars, sandwiches, etc.) bearing the mark CAFFÈ NERO.

Exhibit MFD9 consists of a copy of the opponent’s annual reports and financial statements which they are legally obliged to file with the UK’s Companies House. It is for the year ending 31 May 2015 and states that the opponent’s ‘Principal activities and future developments’ as being ‘high quality Italian style coffee bars’ and ‘In addition to its core range of high quality espresso-based coffees, Caffè Nero offers an array of pastries, baked goods, freshly made Panini, sandwiches, salads and pastas, as well as cakes and biscotti.’ The report goes on to state ‘At the year end, we had 571 stores operating in 247 UK and Irish towns and cities’. Further, the sales ending May 2015 were £241.3m, up from £222.4m in 2014.

The opponent also makes reference to various awards which it has won, including the 2015 ‘Best Tasting Coffee’ award from the independent consumer magazine ‘Which’ and the 2015 Shopping Center Forum Café Retailer of the year.

Assessment of the evidence

In the present case, the material submitted by the opponent, in particular the history of the brand, sales figures which have been verified by the filing of official accounts and the various marketing literature, awards and extent that the trade mark has been used are sufficient to show that it has an enhanced degree of distinctive character for coffee, café services plus coffee and coffee house services.

On the basis of the above, the Opposition Division concludes that the earlier trade mark CAFFÈ NERO has acquired an enhanced degree of distinctive character by virtue of the use on the market for:

Class 30: Coffee; coffee and espresso beverages; coffee essences and extracts

Class 43: Café services; coffee bar and coffee house

With regard to the remaining goods and services, the distinctiveness of the mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning in relation to any of the services at hand 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 weak element in the mark as stated in section c) above.

Global assessment, other arguments and conclusion

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

Since the element CAFFÈ is considered to be of weak distinctive character. Therefore, when consumers are faced with the respective marks, they will not rely upon CAFFÈ to denote trade origin. Further, consumers will not dissect ‘GALLONERO’. With this in mind and whilst the earlier mark has an enhanced degree of distinctive character by virtue of the use made of it, and the goods are identical, there is no likelihood of confusion. Simply, the marks are not similar to the extent that confusion would arise or that there is a likelihood of association.

Remaining earlier rights

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

European Union trade mark registration No. 11 885 753 CAFFÈ NERO for goods and services in Classes 11, 21, 30, 35 and 43.

European Union trade mark application No. 13 238 019 CAFFÈ NERO for goods and services in Classes 25, 30 and 35.
European Union trade mark application No. 13 436 175 for goods and services in Classes 30, 35 and 43.

European Union trade mark registration No. 2 133 908 for goods and services in by Classes 30 and 42.

European Union trade mark registration No. 11 363 215 GREEN CAFFÈ NERO for goods and services in Classes 30, 35 and 43.

United Kingdom trade mark registration No. 3 071 633 CAFFÈ NERO for goods and services in Classes 25, 30 and 35.

Well-known trade mark CAFFÈ NERO for goods and services in Classes 25, 30, 35 and 43.

Since marks 1, 2, 3, 4 and 7 are identical (or highly similar) to the one which has been compared where the goods were found to be identical and had an enhanced degree of distinctive character, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

The other earlier right (mark 5) invoked by the opponent is less similar to the contested mark since it contains the additional word GREEN which is not present and is distinctive in the contested sign. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected.

EARLIER WELL-KNOWN MARK – ARTICLE 8(2)(c) EUTMR IN CONJUNCTION WITH ARTICLE 8(1)(b) EUTMR

The opposition has already been rejected under Article 8(1)(b) EUTMR.

The opponent also bases its opposition on the well-known trade mark CAFFÈ NERO for all Member States in the European Union within the sense of Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) EUTMR in relation to goods and services in Classes 25, 30, 35 and 43.

Article 8(2)(c) EUTMR in general only defines the earlier trade mark ‘for the purposes of paragraph 1’ and, therefore, does not provide an independent relative ground for refusal. Accordingly, the grounds for refusal and opposition are those established by Article 8(1)( b) EUTMR.

The Opposition Division has already found under Article 8(1)(b) there is no likelihood of confusion between the contested sign and the earlier mark. Therefore, the outcome cannot be more favourable for the opponent under this legal basis. The only possible outcome is that there is no likelihood of confusion in the relevant territory, not even where the opponent relies on the well-known character of its earlier trade mark.

Consequently, the opposition based on Article 8(2)(c) EUTMR must be rejected.

The examination of the opposition will continue in relation to the remaining grounds invoked by the opponent, namely Article 8(5) and 8(4) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

For the avoidance of doubt, the decision is still focussing on the opponent’s earlier UK trade mark registration No 2 640 730 CAFFÈ NERO.

According to the opponent, the earlier mark has a reputation throughout the European Union but it is particularly strong in the UK, Ireland, Poland and Cyprus. For the Article 8(5) claim the focus is on its reputation in the UK.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

The signs must be either identical or similar.
The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.
Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

Reputation of the earlier trade mark

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

As previously stated the contested trade mark was filed on 22/12/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the United Kingdom prior to that date. Under the Article 8(1)(b) EUTMR assessment, the evidence was assessed to determine whether the mark has an enhanced degree of distinctive character by virtue of the use made of the mark. Reference is made to the evidence.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The sales figures, marketing expenditure and market share shown by the evidence and the various references in the press to its success all unequivocally show that the mark enjoys a high degree of recognition among the relevant public. Therefore, the earlier UK trade mark registration is found to have a reputation for the following goods and services:

Class 30: Coffee; coffee and espresso beverages; coffee essences and extracts

Class 43: Café services; coffee bar and coffee house

The ‘link’ between the signs

As seen above, the earlier mark is reputed for the goods and services listed above and the signs are not sufficiently similar for there to be a likelihood of confusion. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙ the degree of similarity between the signs;

∙ the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙ the strength of the earlier mark’s reputation;

∙ the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙ the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 27, 29 and 31; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 57, 58 and 66).

The question of whether the relevant public will establish a link between the marks at issue is a question of fact which must be answered in the light of the facts and circumstances of each individual case.

In the present case, the signs are similar to some extent since that they coincide in the weak element ‘CAFFÈ’ but it does not mean that the relevant public is necessarily likely to establish a link between them even when confronted with goods or services that are identical or similar to those of the earlier marks with reputation. The existence of such a link must be assessed globally, taking into account all factors relevant to the circumstances of the case (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 41).

The Opposition Division takes into account the reputation that the opponent has, the identical goods and that the required degree of similarity can be lower in the case of Article 8(5) than 8(1)(b) EUTMR. However, the conclusion reached is that the coincidences between the signs are simply not sufficient for there to be a link. When encountering the contested sign in relation to coffee, the opponent’s mark would not come to mind and the consumer would not make any mental link with the mark that it has been proven to have a reputation also for coffee. Clearly there is an even lesser likelihood of a link being made in relation to the contested coffee-grinding and coffee roasting and processing services. The marks will be perceived in too different a way for a link to be made, as required under Article 8(5) EUTMR.

Given that the public is unlikely to establish a link between the trade marks in dispute, the Opposition Division concludes that the use of the contested sign on these goods cannot take advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

With regard to the remaining earlier marks which the opponent relies upon, it cannot be in a better position. The opponent had satisfied that it had the requisite reputation and this reputation was high and for goods identical to those covered by the contested sign. Therefore, an analysis based on identical marks (or less similar marks) cannot be a stronger claim from the opponent. The Article 8(5) EUTMR claim also fails in respect of the remaining earlier relied upon applications and registrations.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4)

The opponent based the opposition on its non-registered use of the trade mark CAFFÈ NERO throughout the European Union.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory.

In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

In the present case, the contested trade mark was filed on 22/12/2015. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in each of the European Union Member States prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for the following goods and services:

b) Use of the earlier rights

The opponent has proven that it has an enhanced degree of distinctive character by virtue of the use made of its CAFFE NERO registration for 8(1)(b) EUTMR and a reputation under Article 8(5) EUTMR. Accordingly, it follows that the opponent has proven prior use in the course of trade of more than mere local significance in the United Kingdom for coffee; coffee and espresso beverages; coffee essences and extracts, café services, coffee bar and coffee house.

c) The right under the applicable law

The opposition is based on a non-registered trade mark used in the United Kingdom. The opponent claims to have the right to prohibit the use of the contested trade mark under the law of passing off.

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods and services under its mark. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

Secondly, a misrepresentation has been made by the defendant as to the origin of the goods. In other words, the public would be likely to believe that goods put on the market under the contested trade mark are actually those of the opponent.

Thirdly, as a result of the defendant´s misrepresentation, the proprietor has suffered damage or is likely to suffer damage.

For the purposes of proving the acquisition of that right, the opponent must prove that it enjoys goodwill for the goods claimed under its marks.

The evidence clearly indicates that by the filing date of the contested trade mark that the opponent’s goods and services (coffee; coffee and espresso beverages; coffee essences and extracts, café services, coffee bar and coffee house) had been effectively present in the market for some time and generating significant sales. The Opposition Division has found that the evidence is sufficient to prove that the opponent enjoys goodwill for its goods and services in the mind of the purchasing public for the signs on which the opposition is based.

d) The opponent’s right vis-à-vis the contested trade mark

It follows that, to obtain in this case the rejection of the contested European Union trade mark in order to protect its non-registered national trade marks, the opponent must establish, in accordance with the legal rules governing actions for passing-off laid down by the laws of the United Kingdom, that three conditions are satisfied: the goodwill acquired; misrepresentation; and damage caused to that goodwill.

As to the condition of misrepresentation, it is necessary to examine whether the goods under the contested European Union trade mark in the United Kingdom are likely to lead the public to attribute the commercial origin of those products to the opponent’s goods. In this context, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial number of members of the relevant public will be misled into purchasing the applicant’s goods in the belief that they are the opponent’s.

As pointed out above, there are sufficient differences between the contested sign and the earlier sign to the extent that there is not a likelihood of confusion. There is one possible difference between the position under trade mark law and the position under passing off law. It is sufficient for passing off purposes that “a substantial number” of the relevant public are deceived, which might not mean that the average consumer is confused. As both tests are intended to be normative measures intended to exclude those who are unusually careful or careless, it is doubtful whether the difference between the legal tests will (all other factors being equal) produce different outcomes. Therefore, the conclusion reached under the likelihood of confusion equally applies to the finding that there will be no misrepresentation.

Since one of the requirements of passing off is not fulfilled, the opposition must be rejected as unfounded with regard to passing off in the United Kingdom and under Article 8(4) EUTMR.

Conclusion

Considering all the above, the opposition must be rejected in its entirety.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Ioana MOISESCU

Mark KING

Cristina CRESPO MOLTÓ

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.

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