OPPOSITION No B 2 681 867

Lifebrands Natural Food GmbH, Holzdamm 28-32, 20099 Hamburg, Germany (opponent), represented by Nesselhauf Rechtsanwälte, Alsterchaussee 40, 20149 Hamburg, Germany (professional representative)

a g a i n s t

Milano Snack di Vendola Michele Alberto e C. S.a.s., Via Santi 2, 20030 Senago (MI), Italy (applicant), represented by Cuccia & Simino S.R.L., Corso di Porta Romana 23, 20122 Milano, Italy (professional representative).

On 24/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 681 867 is upheld for all the contested goods, namely

Class 30:        Coffee; Ground coffee; Decaffeinated coffee; Mixtures of coffee; Coffee in whole-bean form; Coffee capsules; Roasted coffee beans; Coffee-based beverages; Coffee [roasted, powdered, granulated, or in drinks]; Filters in the form of paper bags filled with coffee.

2.        European Union trade mark application No 14 799 712 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 799 712 , namely against all the goods in Class 30. The opposition is based on European Union trade mark registration No 9 457 201 .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.

1. The goods

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

Class 30:        Coffee.

The contested goods are the following:

Class 30:        Coffee; Ground coffee; Decaffeinated coffee; Mixtures of coffee; Coffee in whole-bean form; Coffee capsules; Roasted coffee beans; Coffee-based beverages; Coffee [roasted, powdered, granulated, or in drinks]; Filters in the form of paper bags filled with coffee.

All the contested goods are included in the broad category of the opponent’s coffee. Therefore, they are identical.

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 are directed at the public at large. The degree of attention will therefore be average, given that the goods at issue are cheap goods for daily consumption.

3. The signs

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. For reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the relevant public, for which all verbal elements of the contested sign will be meaningful.

The earlier mark is a figurative mark composed of the two verbal elements ‘Caffè’ and ‘Milano’ arranged on two lines, both written in red on a black background. The element ‘Caffè’ on the upper line is written in significantly smaller characters than the element ‘Milano’ and is descriptive for the relevant goods, i.e. ‘coffee’. The first three letters of the element ‘Milano’ which appear on the lower line in much larger characters, are written in bold. The first letter ‘M’ and the last three letters ‘ano’ are in upper case. ‘Milano’ will be understood by the relevant public as a reference to the Italian city of Milan, which, however, is not renowned for coffee. Therefore, this element cannot be considered as totally devoid of distinctiveness. However, since it still alludes to the Italian origin of the goods, it is weak.

The verbal elements of the earlier mark ‘Caffè Milano’, read together, allude to the geographical origin of the goods; however, contrary to the applicant’s observations, they are, as explained above, not totally devoid of distinctive character, as the latter resides in the word ‘Milano’ and in the mark’s structure and stylisation.

The element ‘Milano’ in the earlier mark is the dominant element as it is the most eye-catching due to its size.

The contested sign is a figurative sign composed of five elements, arranged over four lines, depicted on a black background. At the top of the mark there is a representation of the Cathedral of Milan. In the centre there are the two verbal elements ‘Caffè’ and ‘Milano’, written in large, red, upper case letters. Below them is the expression ‘l’Aroma Italiano’, written in italics and the same shade of red, but in smaller letters than ‘Caffè’ and ‘Milano’. Finally, at the bottom, a small representation of the Italian flag is depicted.

The findings concerning the distinctiveness of the elements ‘Caffè’ and ‘Milano’ of the earlier mark apply equally to the contested sign. The representation of the Cathedral of Milan will be recognised by the relevant public and reinforces the idea of the City of Milan. Therefore, this element is as weak as the element ‘Milano’ to which it refers. The expression ‘l’Aroma Italiano’ is non-distinctive, since it is a mere promotional slogan, understood by the relevant public, and refers to a quality of the products and their origin. Finally, the representation of the Italian flag is also non-distinctive for the relevant goods as it reinforces the idea of Italy as the origin of the goods at issue, and Italy is renowned in Europe for its coffee and coffee culture.

The contested sign has no elements that could be perceived clearly dominant; however, the slogan ‘l’Aroma Italiano’ and the Italian flag are less eye-catching than the rest of the elements due to their size and positioning.

Visually, the signs coincide in the verbal elements ‘Caffè’ and ‘Milano’, being the only elements of the earlier mark, and in the use of red font on a black background. They differ in the additional elements of the contested sign, such as the representation of the Cathedral of Milan, the slogan ‘l’Aroma Italiano’ and the representation of the Italian flag, which are, however, all weak or non-distinctive. Account is taken of the fact, that 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). Consequently, the coinciding elements ‘Caffè’ and ‘Milano’, as verbal elements, will attract the most attention in the contested sign, given that the slogan ‘l’Aroma Italiano’ is in a secondary position and in smaller characters. Finally, the fact that the signs coincide in the dominant element ‘Milano’ of the earlier mark cannot be disregarded.

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

Aurally, the slogan ‘l’Aroma Italiano’ will most probably not be pronounced, because of its smaller lettering and non-distinctive character, as explained above. The only elements of the contested mark that will be pronounced are ‘Caffè’ and ‘Milano’ — which are also the only elements of the earlier mark.

Therefore, the signs are aurally identical.

Conceptually, the elements ‘Caffè’ and ‘Milano’, included in both signs, will be associated with coffee and with the city of Milan, as explained above. The representation of the Cathedral will be immediately connected with the city of Milan and will thus reinforce the idea of Milan. The signs differ in the concept of Italian aroma conveyed in the contested mark and in the Italian flag; however, these concepts lack distinctiveness. Consequently, the signs are conceptually similar to a high degree.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the distinctiveness of the earlier mark as a whole must be seen as weak, considering the presence of weak and non-distinctive elements, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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

In the present case the goods are identical. The signs are visually similar to at least an average degree, aurally identical and conceptually similar to a high degree.

The signs coincide in the dominant element of the earlier mark and the use of red letters on a black background, which is one of the decisive factors when establishing the degree of distinctiveness of both marks. The degree of distinctiveness of the earlier mark is weak. However, the differences between the signs are confined to non-distinctive or secondary elements, such as the representations of the Cathedral of Milan, the Italian flag and the slogan ‘l’Aroma Italiano’. Taking that into account, together with 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), a likelihood of confusion exists, especially since the degree of attention of the relevant public is average.

The applicant argues that the earlier mark lacks distinctiveness due to the descriptive nature of its verbal elements in relation to the goods it covers. However, when dealing with the distinctiveness of the earlier mark as a whole in the opposition proceedings, it should always be considered to have at least a minimum degree of inherent distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court made this clear in its judgment of 24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40-41, and added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’. As the earlier trade mark is a figurative mark, the degree of distinctiveness of the mark is due not only to the degree of distinctiveness of the word elements but also to its stylisation. Finally, as the applicant itself stated in its observations, questioning the distinctiveness of the registered EUTM is not the subject of the opposition proceedings, but is pertinent for cancellation proceedings before the Office.

The applicant further argues that it should not be prevented from registering its trade mark containing the descriptive word ‘caffè’ and the well-known geographical indication ‘Milano’ together with other distinctive elements, if the opponent managed to obtain protection for what the applicant refers to as an ‘invalid’ trade mark made up only of the above two descriptive terms. Firstly, the earlier mark is a formally valid and protected trade mark. Secondly, there are no other distinctive elements in the contested sign, except for the representation of the Cathedral, which enjoys very limited distinctiveness. Furthermore, the rejection of the contested sign is not confined to considerations as to whether the elements of the contested sign or the contested sign as a whole are sufficiently distinctive (the contested sign passed the formal examination, which dealt with such considerations), but whether there is a likelihood of confusion, based mainly, in the present case, on the coinciding stylisation of the signs.

Finally, neither the fact that the applicant owns an Italian registration similar to the contested sign, nor its name nor the actual origin of its goods is relevant for the present case, since those are not factors on which the assessment of likelihood of confusion is based, pursuant to Article 8(1)(b) EUTMR.

Considering all the above, there is a likelihood of confusion on the part of the Italian-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 9 457 201. It follows that the contested trade mark must be rejected for all the contested goods.

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

Ioana MOISESCU

Birgit Holst FILTENBORG

Michaela SIMANDLOVA

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.