OPPOSITION No B 2 509 522

Alois Dallmayr Kaffee OHG, Dienerstr. 14-15, 80331 München, Germany (opponent), represented by Taylor Wessing, Isartorplatz 8, 80331 München, Germany (professional representative)

a g a i n s t

Caffitaly System S.p.A., Via Panigali 38, 40041 Gaggio Montano (Bologna), Italy (applicant), represented by Ruffini Ponchiroli E Associati S.R.L., Via Caprera, 6, 37126 Verona, Italy (professional representative)

On 23/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 509 522 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 of European Union trade mark application No 13 587 134 . The opposition is based on European Union trade mark registration No 5 765 888 ‘Capsa’ (word mark). 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 9: Coffee vending machines. 

Class 11: Electric coffee machines for hot beverages; electric coffee machines and electric coffee filter apparatus; coffee roasters. 

Class 30: Coffee, tea, cocoa, sugar, artificial coffee, coffee beverages.

The contested goods are the following:

Class 11: Electric coffee percolators; electric coffee urns. 

Class 21: Coffee percolators, non-electric; coffeepots, non-electric; non-electrical coffee grinders. 

Class 30: Coffee; coffee extracts and preparations for making beverages (coffee-based); artificial coffee; tea; tea extracts and preparations for making beverages (tea-based); cocoa and cocoa products; chocolate; chocolate based products; sugar; sweeteners (natural -); honey and honey substitutes.

Some of the contested goods are identical and some are similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were, at least, in part identical and in part similar to those of the earlier mark.

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 assumed to be, at least, in part identical and in part similar are directed at both, the public at large (e.g. coffee) and professionals (e.g. electric coffee urns).

The degree of attention during the purchase of the goods in question is deemed to be average.

3. The signs

Capsa
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).

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.

The word ‘Capsa’ forming the earlier mark is meaningless for the vast majority of consumers in the relevant territory, who perceive it as an invented term with no concept (e.g. Spanish-speaking, French-speaking or English-speaking consumers). For other consumers, such as the Romanian-speaking consumers, it means
‘to staple’ and, for Czech-speaking consumers it can be seen as a misspelled of ‘kapsa’, which means ‘pocket’.

The contested mark is formed by two verbal elements, namely ‘LACAPSULA’ and ‘Caffitaly’.

The word ‘LACAPSULA’ is meaningless for the vast majority of consumers in the relevant territory, who perceive it as an invented term with no concept. However, for part of the public (i.e. the Spanish or Italian-speaking consumers) it will be perceived as formed by two independent but linked terms, ‘LA’ and ‘CAPSULA’, since both are known and used in Italian (‘la capsula’) and Spanish (‘la cápsula’), and therefore the mental division will take place. The word ‘la’ is the article used in Spanish and Italian, the equivalent to ‘the’, used to introduce a female noun. The word ‘CAPSULA’ is the term used in those same languages to refer to ‘capsule’.

The word ‘Caffitaly’ is an invented term that will be perceived as meaningless by the vast majority of consumers in the relevant territory. However, it cannot be totally excluded that part of the public perceives in it the concepts of ‘coffee’ and/or ‘Italy’, due to the spelling similarities between those words and some parts of this term, namely ‘caff-’ and ‘-italy’. It is accompanied by a merely decorative curved line on top of letter ‘t’.

The earlier mark has no element more distinctive than others and, being a word mark, due to its own nature, it cannot have elements that could be considered more dominant (visually eye-catching) than others.

In this regard, the word ‘LACAPSULA’ is, for the part of the public attributing it the concept of ‘the capsule’ referred to above (i.e. the Spanish-speaking or the Italian-speaking consumers) of low distinctive character in relation to the goods in Class 30 that are sometimes sold in the form of ‘capsules’, such as coffee. It is of average distinctive character in relation to the rest of the contested goods.

The last letter ‘A’ in ‘LACAPSULA’ is depicted in a form of a capsule. Therefore, it is of low distinctive character in relation to the goods in Class 30 that are sometimes sold in the form of ‘capsules’, such as coffee. It is of average distinctive character in relation to the rest of the contested goods. The rectangular shape containing the verbal elements, is merely acting as a decorative background, and it is therefore void of distinctive character. The curved line in ‘Caffitaly’ is also merely decorative and non-distinctive.

The word ‘Caffitaly’ is, for the part of the public perceiving in it the concepts of ‘coffee’ and/or ‘Italy’, at least allusive of the characteristics of some of the goods involved, namely those related to coffee, which is frequently related to the Italian culture or to the fact that it could be produced in Italy. It is in this scenario considered of lower than average distinctive character. It is of average distinctive character for the vast majority of consumers, who will perceive it as meaningless.

Regarding the distinctiveness of ‘Caffitaly’, the opponent has argued that it is a reference to the ‘Caffitaly system’, which is a single-serving system for espresso and coffee for specific coffee machines.

However, this cannot be expected to be known by consumers purchasing the goods in question. From the documents submitted by the opponent during the course of the present proceedings it cannot be inferred that the term ‘Caffitaly’ is understood and/or used by even a small part of consumers as referring to the system referred to above. The argument is therefore dismissed.

The opponent has also argued that ‘Caffitaly’ is part of the applicant’s name, and it is of limited relevance since it will be perceived as an umbrella brand within the sign. Once again, the argument of the opponent is dismissed, since despite the fact that it is contained in the applicant’s company name, its distinctive character is not for that reason altered.

Defining in this case the existence of an element more distinctive than others in the contested mark will depend on the perception that consumers have of each of the elements forming it, reference is therefore made to the above findings.

Regarding the existence of elements more dominant (visually eye-catching) than others in the contested mark, this is formed by the dominant element ‘LACAPSULA’ and by the less eye-catching element ‘Caffitaly’.

The opponent argues that certain parts of the contested sign should be considered negligible elements, namely ‘LA’ and ‘Caffitaly’. It states that the comparison should be carried out between ‘Capsa’ and ‘CAPSULA’.

In this regard, the Opposition Division notes that a negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the contested mark, there are no elements that could be considered not noticeable at first sight, and that could be disregarded by the relevant public. Despite the degree of distinctiveness of each element forming it, or the visual impact within the mark, they are all perceived. Therefore, this argument of the opponent is dismissed.

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) In this regard, also for this reason the figurative element of the contested sign consisting of the shape of a capsule (forming ending letter ‘A’) is of less impact than the verbal element it is contained in.

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. In this regard, it must be noted that the signs differ in their beginnings, ‘LACAPSULA Caffitaly’ and ‘Capsa’ (emphasis added).

Visually, the opponent argues that the sequence of letters ‘c-a-p-s-a’ forming the earlier mark is fully contained in the contested mark. However, the same sequence of letters is not entirely and identically contained or positioned.

The signs coincide in some letters of ‘LACAPSULA’ and ‘Capsa’, namely
‘C-A-P-S’ and an ending ‘A’. However, the sequence ‘C-A-P-S’ does not occupy the same position within the words it is contained in. The ending ‘A’ is positioned at the end being preceded by a significantly different number of letters (i.e. four letters vs. eight letters). In addition, in the contested sign this letter is depicted with the shape of a capsule. These circumstances leave the ending ‘A’ as a somehow diluted visual coincidence.

The signs differ in ‘LA’ (which leads to the different beginnings referred to before) and ‘UL’ of ‘LACAPSULA’ (emphasis added) in the contested sign, and in the term ‘Caffitaly’ of that same sign. In addition, the signs differ in the capsule depiction in the last letter ‘A’ of ‘LACAPSULA’ and in its dark background and curved line.

For all of the above, it is considered that the signs are visually similar to a low degree.

Aurally, the signs coincide in the sound of some letters forming ‘Capsa’ and ‘LACAPSULA’, namely in the sequence of letters ‘c-a-p-s’ and in the ending ‘-a’.

However, the coinciding sounds do not occupy the same position within the words, since they are at the beginning of the earlier mark (first and second syllable, ‘cap/sa’) and in the middle of contested sign (second and third syllable, ‘la/cap/su/la’). The coinciding letter ‘a’ is accompanied by different consonants in the syllables of each sign, ‘/sa/’ vs. ‘/la/’. In addition, the signs differ aurally in the sound of the beginning ‘la-‘, the middle letters ‘-ul-‘ and the sound of the term ‘caffitaly’, all in the contested sign. The signs have a different number of syllables, namely two syllables in the earlier mark, ‘/cap/sa/’, and eight syllables in the contested sign, ‘/la/cap/su/la/ca/ffi/ta/ly/’. This difference in the number of syllables leads to a difference in rhythm and intonation in the signs.

Therefore, for all of the above, it is considered that the marks are aurally similar to a low degree.

Conceptually, the contested sign can be perceived as containing verbal elements with or without a concept (reference is made to the meanings explained before), however, the concepts of the figurative elements referred to before will be perceived in all cases.

For the part of the public attributing a concept to the earlier mark, the signs are not conceptually similar. For the part of the public not attributing a concept to the earlier mark, since one of the signs will not be associated with any meaning, the signs are also 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’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.

5. Global assessment, other arguments and conclusion

The signs are visually and aurally similar to a low degree, and not conceptually similar.

The goods have been assumed to be, at least, partly identical and partly similar. They are directed at both, the public at large and professionals, and the attention paid by them during the purchase of the goods is deemed to be average.

The Opposition Division has assumed in part d) of this decision that the earlier mark has been extensively used and enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness. 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).

In the present case, as it has been explained in section c), the coinciding letters in the signs does not occupy the same position within the words they are contained in. The signs differ significantly, both visually and aurally, and have no common concept.

In the scenario described above, and taking into account all the circumstances of the case and arguments and evidence submitted by the parties, it is considered that the signs do not have sufficient similarities as for likelihood of confusion or association between them to arise, even assuming the identity and similarity of the goods involved, and an enhanced degree of distinctiveness of the earlier mark. Considering all the above, there is no likelihood of confusion on the part of the public, and therefore, the opposition must be rejected.

The applicant requested the opponent to provide proof of use of the earlier trade mark. However, given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

Likewise, even assuming that the earlier mark enjoys an enhanced distinctiveness due to extensive use, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use.

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

Carlos MATEO PÉREZ

María del Carmen SUCH SANCHEZ

Vít MAHELKA

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.