OPPOSITION No B 2 691 874

Joaquim Almela Vicent, C/ Ultonia, 3 – 3º 2ª, 17002 Girona, Spain (opponent), represented by Patentes y Marcas A. Pomares, S.L., C/ José Ramos, 2 Entlo., 03203 Elche (Alicante), Spain (professional representative)

a g a i n s t

Haydar Yagmur, Spieslgasse 1, 60439 Frankfurt, Germany (applicant), represented by Hofstetter, Schurack & Partner, Patent- und Rechtsanwaltskanzlei, PartG mbB, Balanstrasse 57, 81541 München, Germany (professional representative).

On 11/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 691 874 is upheld for all the contested goods.

2.        European Union trade mark application No 14 975 973 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 975 973. The opposition is based on Spanish trade mark registration No 3 501 608. 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, coffee also in envelope filter, coffee drinks based; coffee and coffee drinks containing milk, milk powder, coffee substitutes, cocoa, chocolate, cereals, fruits, sugar, herbs or spices or a combination thereof; coffee extracts, instant coffee, coffee substitutes: tea, tea based drinks, tea leaves, herbal tea, tea extracts, instant tea, tea substitutes; tea infusions; not medical infusions; cocoa, cocoa beverages; chocolate and chocolate powder extracts, granulated or in liquid form; sugar; spices; herbs for the preparation of beverages; herbs blended for the preparation.

The contested goods are the following:

Class 30: Coffee in whole-bean form; coffee powder; espresso beans; espresso powder; cocoa powder; hot beverages, namely cappuccino, espresso, coffee, caffè latte, hot chocolate; instant coffee; instant cocoa; capsules for coffee-based, cocoa-based and tea-based beverages; pads for coffee-based, cocoa-based and tea-based beverages; tea; tea-based beverages; cocoa-based beverages; artificial coffee.

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

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

Coffee powder; hot beverages, namely coffee; instant coffee; tea; tea-based beverages; cocoa-based beverages; artificial coffee are identically contained in both lists of goods (including synonyms).

The contested coffee in whole-bean form refers to any bean roasted and readied for brewing and the contested espresso beans usually belong to the dark roast category, as this is the stage in which the beans offer the least acidity, with a fuller body. As such, they are included in the broad category of the opponent’s coffee. Therefore, they are identical.

The contested espresso powder is very intense, dark and concentrated instant coffee and, consequently, it is included in the broad category of the opponent’s instant coffee. Therefore, they are identical.

The contested cocoa powder; instant cocoa are included in the broad category of the opponent’s cocoa. Therefore, they are identical.

The contested hot beverages, namely cappuccino, caffè latte are included in the broad category of the opponent’s coffee drinks containing milk or milk powder. Therefore, they are identical.

The contested hot beverages, namely espresso is coffee brewed by forcing a small amount of nearly boiling water under pressure through finely ground coffee beans and, consequently, it is included in the broad category of the opponent’s coffee. Therefore, they are identical.

The contested hot beverages, namely hot chocolate are included in the broad category of the opponent’s cocoa beverages. Therefore, they are identical.

The contested capsules for coffee-based, cocoa-based and tea-based beverages; pads for coffee-based, cocoa-based and tea-based beverages refer to coffee, cocoa and tea pre-packaged in individual portions, in particular in the form of capsules or pads. As such, they are included in the broad category of the opponent’s coffee, cocoa and tea, respectively. 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 is considered average.

3. The signs

	KAFFEE AVANTI
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 Italian word ‘AVANTI’, which the signs have in common, will be understood as ‘adelante’ by a significant part of the Spanish relevant public, since it is certainly used in informal parlance, even by those who do not have a knowledge of Italian. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The applicant argues that the earlier mark contains the verbal element ‘ALANTI’ and the graphic depiction of a leaf. However, although the depiction of a leaf is superimposed on the right-hand side of the letter ‘V’, it is positioned and oriented such that it facilitates the perception of the letter ‘V’. Therefore, the Opposition Division considers that the relevant public will undoubtedly perceive the verbal element of the earlier mark as the word ‘AVANTI’, despite the presence of the graphic depiction of a leaf.

The element ‘KAFFEE’ of the contested sign, although a foreign word, will be understood by the relevant public, as it is very close to the equivalent word in the official language in the relevant territory, ‘café’. Bearing in mind that the relevant goods include coffee, this element is weak for some of these goods, namely coffee in whole-bean form; coffee powder; espresso beans; espresso powder; hot beverages, namely cappuccino, espresso, coffee, caffè latte; instant coffee; capsules for coffee-based beverages; pads for coffee-based beverages; artificial coffee.

The earlier mark has no elements that could be considered clearly more dominant than other elements.

The visual similarity between signs may have an increased importance where the goods are ordinary consumer products (e.g. goods in Classes 29 and 30) that are most commonly purchased in supermarkets or establishments where goods are arranged on shelves and where consumers are guided more by the visual impact of the mark they are looking for. In the present case, only the letter ‘V’ of the earlier mark, which includes the depiction of a leaf, is highly stylised; the rest of the letters are standard.

The applicant emphasises the importance of the beginnings of the conflicting signs for the consumer’s perception of the signs. Although the importance of the initial part of a word in the consumer’s mind has been underlined by the General Court, this finding is not an axiom. As noted by the Court itself, this consideration cannot apply in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52). In the present case, the reproduction in its entirety of the word ‘AVANTI’ in the contested sign, where it plays an independent and distinctive role, and the fact that it constitutes the sole verbal component of the earlier mark are relevant aspects to consider in assessing the overall impression produced by the signs. Furthermore, as concluded above, the first element, ‘KAFFEE’, of the contested sign is weak.

Visually, the signs coincide in the word ‘AVANTI’, which is the only verbal element in the earlier mark. However, they differ in the additional verbal element of the contested sign, ‘KAFFEE’, which is weak for some of the relevant goods, and in the depiction of a leaf in the earlier mark.

Therefore, the signs are visually similar to between an average and a high degree, depending on the distinctiveness of the element ‘KAFFEE’ in relation to the relevant goods.

Aurally, the pronunciation of the signs coincides in the syllables ‛A-VAN-TI’, present identically in both signs. The pronunciation differs in the sound of the letters of the first element of the contested sign, ‛KAFFEE’, which will be pronounced as the equivalent word in Spanish, ‘café’, and is weak for some of the relevant goods.

Therefore, the signs are aurally similar to between an average and a high degree, depending on the distinctiveness of the element ‘KAFFEE’ in relation to the relevant goods.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings for part of the relevant public, they are conceptually highly similar.

For the small part of the public that does not understand the word ‘AVANTI’, which the signs have in common, the verbal element ‘KAFFEE’ of the contested sign and the leaf of the earlier mark will be associated with the meanings explained above. As the signs will be associated with dissimilar meanings, they are not conceptually similar for this part of the public.

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 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 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.

The goods are identical. The relevant public has an average degree of attention and the degree of distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to between an average and a high degree on account of their coinciding word ‘AVANTI’, which is the only verbal element of the earlier mark. As regards the differing elements of the signs, the additional element ‘KAFFEE’ in the contested sign is weak for some of the goods at issue and the depiction of a leaf in the earlier mark serves merely to embellish the letter ‘V’. Furthermore, the signs are conceptually either highly similar or not conceptually similar.

Consequently, even if average consumers are capable of detecting certain visual, aural and conceptual differences between the conflicting signs, the likelihood that they might associate the signs with each other is very real. From the wording in Article 8(1)(b) EUTMR, ‘the likelihood of confusion includes the likelihood of association with the earlier trade mark’, it follows 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. In the present case, it is conceivable that the relevant consumer will perceive the mark applied for as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods which 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 public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 501 608. 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, he 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

Alexandra APOSTOLAKIS

Marta GARCÍA COLLADO

Richard BIANCHI

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.