OPPOSITION No B 2 677 485

Imperial – Produtos Alimentares, S.A., Rua de Santana, 4480-160 Azurara, Portugal (opponent), represented by Rui Pelayo de Sousa Henriques and Pedro Gil Da Silva Pelayo de Sousa Henriques, Rua de Sá da Bandeira, 706 – 6°. Dt°., 4000-432 Porto, Portugal (professional representatives)

a g a i n s t

Alessia Maghella, via San Pietro 28/A, 46043 Castiglione delle Stiviere (MN), Italy (applicant), represented by Marks & US, Marcas y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative).

On 15/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 677 485 is upheld for all the contested goods.

2.        European Union trade mark application No 15 109 771 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 109 771. The opposition is based on, inter alia, European Union trade mark registration No 1 577 139. The opponent invoked Articles 8(1)(b) and 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier EUTM No 1 577 139, for which the opponent claimed reputation in Portugal.

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.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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 abovementioned 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.

1. 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.

In the present case the contested trade mark was filed on 15/02/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Portugal prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely

Class 30: Chocolates, cocoa, sweetmeats (candy) and confectionary.          

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

Following the extension of time limit set by the Office for the opponent to submit further facts and evidence in support of the opposition (originally due to expire on 07/10/2016 and extended until 07/12/2016), on 29/11/2016, the opponent submitted the following evidence:

• Document 1: a document issued by Associação dos Industriais de Chocolates e Confeitaria (Portuguese Association of the industrial of chocolates and confectionery – ACHOC), dated of 11/04/2016. The document states that the brand Regina is amongst the oldest brands in Portugal in the chocolate and confectionery sector, that the brand enjoys a high reputation in the chocolate and confectionery sector and is recognised by the Portuguese public even outside the chocolate and confectionery sector.

• Document 2: a sworn declaration dated of 22/04/2016, signed by Rute Daniela das Neves Lopes da Silvia Gonçalves, member No. 56704 of the Order of Chartered Accountants (CENTRAR). The document refers to the annual turnover of the company Imperial-Produtos Alimentares, S.A. for the period 2004-2015. According to the declaration, the turnover is generated by sales of chocolate goods under the brand Regina. Attached to the declaration a table concerning the sale of different Regina goods is provided. The tables show impressive sales figures in millions of Euro.

• Document 3: a copy with the translation of an article from the Portuguese publication Marketeer dated of June 2002. The article refers to the brand Regina which was founded in late 1920s. According to the article Imperial company re-launched the Regina brand in Easter 2002. It shot the company to first place in the chocolate/coated nut segment, with a 124% increase over the year 2001. The investment in re-launching the brand was 200 000 EUR (in 2002) for promotional and store activities. The article also mentions Regina as the largest Portuguese manufacturer of chocolates with a high reputation.
• Document 4: a copy of an article from Portuguese publication Distribution today (DH) dated in March 2004. The article is referring to the company Imperial (the biggest Portuguese manufacturer of chocolates) which bought Regina brand in 2000 and was set to increase to new markets. It mentions, among others, a trade mark Regina as a highlight from the vast portfolio of Imperial brands.
• Document 5: a copy of an article dated of 21/03/2009 published in the Portuguese magazine ‘Expresso’. According to the article the use of Regina trade mark was suspended for six years and was later reborn on being bought by the company Imperial. Regina alone accounts for 47% of Imperial’s global sales. The article also provides history of the  Regina brand.
• Document 6: a copy of an article taken from the magazine Expresso, dated 14/08/2010 concerning the growth of the company Imperial. The article also refers to the Regina brand which accounts for over half of the company’s global business. According to the article Regina chocolate umbrellas are for Imperial only one indicator of the company potential for expansion.
• Document 7: a catalogue showing different Regina products such as boxes of chocolate pralines, chocolate umbrellas, chocolate eggs and other types of chocolates.
• Document 8: a document showing Regina packages of products (some of them with an expiry date in 2013, 2016, 2017 or 2018), boxes and bags of chocolates, chocolate eggs, pralines, etc.
• Document 9: a copy of an article dated on 25/10/2013 taken from the magazine Mundo Português with an attached translation to English. The article refers to the 85th birthday of the brand Regina (‘Celebrating this year its 85th anniversary, the trade mark of chocolates ‘Regina’ has just relaunched the nostalgic Machine of Holes.’ ‘Missing for 20 years, this icon of the Portuguese culture, that keeps a place in the memory of whole generations, is back.’).
• Document 10: a copy of an article taken from the Portuguese publication Jornal de Noticias of 15/12/2013 with an attached translation into English. The article refers to the product box of holes Regina, which became a big success in Portugal (in 2013 there were more than 20 thousand demands for this product). The product disappeared in 1993 and resurrected 20 years later, just in time for the celebrations of 85 years of the famous mark for chocolates. The article refers to trade mark Regina as a ‘famous mark for chocolates’. The article also mentions box of Regina chocolates heart (for 80 cents).
• Document 11:  a copy of an article from the Portuguese publication STORE MAGAZINE of 01/01/2014. It reports that ‘Regina’ was born in 1928 and since then, it has been part of life of Portuguese. Some of the Regina products were re-launched in 2002 and in short time the brand returned to take a prominent position in the Portuguese market. It became a leader in the segment of dried fruit covered with chocolate. According to the article only in 2012, the company sold 125 million units of dried fruit covered with chocolate. The article also shows pictures of Regina products (boxes with chocolate pralines, chocolates, etc.).
• Document 12: a copy of the Portuguese publication Marketeer of 01/01/2014. The document contains different articles about celebrities and their favourite trade marks. One of the articles contains references to Regina products.
• Document 13-15: extracts from the newspaper Mundo Portugues of 21/11/2014, and 14/08/2015 and 28/08/2015) which contain references to chocolate producer Imperial. According to Mundo Portugues newspaper chocolate brand Regina is the most popular trade mark for chocolates in Portugal (article of 28/08/2015).
• Document 16: an article from Grande Consumo magazine (November/December 2015) with references to new Regina products (Cat’s Tongues of milk chocolate).
• Document 17: A copy of an article from the Diário Económico (of 28/12/2015) in which it is said that the trade mark Regina is positioned as a leader in the segment of dried fruits covered with chocolates and represents about 40% of total company sales in Portugal.
• Document 18: a copy of the magazines Cristina (Year 1/Number 10), Dica (09/04/2015), Lux (23/11/2015), Caras (31/10/2015), showing an advertisement for chocolates under the trade mark.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent demonstrates that the earlier trade mark ‘Regina’ has a reputation in Portugal.

The abovementioned evidence indicates that the earlier trade mark ‘Regina’ was first launched in the late 1920s and while it is true that it disappeared off the market in 1996, the evidence shows that the products under this mark were re-launched in 2002 and that the mark immediately re-acquired its reputation and emblematic status in Portugal that it enjoyed in the past. The re-launch shot the company to first place in the chocolate/coated nut segment, with a 124% increase over the year 2001. This together with the numbers from Document 2 shows that trade mark must have enjoyed a very considerable reputation before it disappeared off the market for the opponent to achieve seven digit turnover figures in only two years after the trade mark’s re-launch in 2002. Since then the mark has been part of life of Portuguese (Document 11) and is considered the most popular trade mark for chocolates in Portugal (Document 15).

The articles from different Portuguese newspapers and magazines all or virtually all mention the trade mark ‘Regina’ as a leading brand in the chocolate sector in Portugal. The articles also include reference about the success of ‘Regina’ which for example accounted for 47% of Imperial global sales in 2009 (Document 5). Other evidence, such as sworn declarations (Documents 1 and 2), as already mentioned, show the sale figures of  products presented in the catalogues (Documents 7 and 8). The mentioned documents show that Regina is a brand for different kinds of chocolate products (for example chocolate tablets, chocolate bars, milk chocolate balls with a filling of crispy cereal, chocolate and sugar-coated almonds and hazelnuts, chocolate seashells, chocolate eggs, dried fruit covered with chocolate).  

The sales figures provided in the affidavit from the accountant of CENTRAR which attests to significant turnover figures together with the declaration from ACHOC (an independent source with a high probative value) and several references in the Portuguese newspapers and magazines (from 2002 until 2015) all suggest that the trade mark ‘Regina’ is known by a significant part of the public concerned by the goods covered by the earlier mark and has a consolidated position in the market (see, to this effect, a decision of the Board of Appeal, 29/01/2013-1, R1127/2013-1).

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.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to chocolates, sweetmeats (candy) and confectionery, whereas there is no reference to cocoa.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union. However, as reputation is claimed only in Portugal, the analysis below focuses on the Portuguese public.

The earlier mark is a figurative mark composed of the word ‘Regina’ in a stylised title-case typeface. The letter ‘R’ of the mentioned word is prolonged in a way that it underlines the word. The contested mark is a figurative mark, depicted in red colour. It is composed of the words ‘Regina Cafè’ above and in between which the letters ‘R’ and ‘C’ in a bigger typeface appear. These letters may be perceived as initial letters of the word combination ‘Regina Cafè’. Accordingly, the sequence of letters and the word combination are intended to clarify each other and draw attention to the fact that they are linked. The contested mark also includes a purely decorative figurative element surrounding the verbal elements.

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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The relevant Portuguese-speaking public will perceive the word ‘Regina’ included in both signs, as a female forename. As the earlier mark ‘Regina’ has no meaning in relation to any of the goods covered by its registration, it should therefore be considered as having a normal distinctive character. The earlier mark, being composed of one word has no element that can be referred to as being dominant or more distinctive.

In relation to the contested mark, the word 'Cafè' refers to coffee in Portuguese. Bearing in mind that the relevant goods are, among others, different kinds of coffee and coffee substitutes or goods that could contain coffee, this element is considered to be descriptive and non-distinctive for most of the goods covered by the contested mark. The additional letters ‘RC’ of the contested mark, which may be perceived as an abbreviation of the words that follow below them (as the words start with a ‘R’ and ‘C’), have no specific descriptive or otherwise weak meaning in relation to the relevant goods and their inherent distinctive character is normal.

The applicant claims that the dominant element of the contested mark are the letters ‘RC’, which not only are located at the initial part of the sign, but also are written in a higher font, in bold letters, and occupy the central part of the contested mark.

The Opposition Division does not share the applicant’s view. The letters ‘RC’ are placed within a stylised frame. While it is true that the letters ‘RC’ are depicted in bigger typeface than the letters forming the verbal elements ‘Regina Cafè’, taking into account the way in which the letters are placed within the stylised frame, it cannot be concluded that they are visually outstanding. Therefore, the Opposition Division considers that the contested mark has no element that could be considered more dominant.

Visually, the signs are similar to the extent that they coincide in the word ‘Regina’, which represents one of the distinctive elements of the contested mark. The marks differ in the stylisation of the letters, the colours (black in the earlier mark and red in the contested mark), as well as in the additional verbal element ‘Cafè’, the slightly bigger letters ‘RC’ and the figurative element of the contested mark.

However, as mentioned above, the figurative elements of the contested mark are purely decorative and/or less important and the verbal element ‘Cafè’ is descriptive in relation to most of the goods of the contested mark.

Taking into account the distinctive and figurative elements of the signs and their respective weight, it is concluded that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛Regina’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation of the signs differs in the sound of the word ‛cafè’ and the letters ‘RC’ of the contested mark, if pronounced at all where merely perceived as the initials of the other verbal elements. However, as already mentioned, the word ‘cafè’ is descriptive and non-distinctive in relation to most of the goods at hand and will have little trade mark significance. While it is true that the additional letters ‘RC’ appear in the beginning of the contested sign and are bigger in size than the remaining verbal elements, the coinciding word ‘Regina’ in the signs is longer and is the only verbal element of the earlier mark.

Therefore, it is considered that the signs are aurally similar to at least an average degree.

Conceptually, since the word ‘Regina’ will be recognised as a female forename by the relevant public and the word 'cafè' has a descriptive meaning in relation to most of the relevant goods while the letters ‘RC’ have no meaning other than representing the initials of ‘Regina’ and ‘Cafè’, the signs are conceptually similar to a high degree.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. 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.

As regards the degree of similarity between the marks at issue, it is clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to it (see, to that effect, judgment of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 67 to § 69; and judgment of 18/06/2009, C-487/07, L’Oréal, EU:C:2009:378, §  44). Moreover, the stronger the distinctive character of the earlier mark, the more likely it is that, when confronted with a later similar mark, the relevant public will associate it with that earlier mark.

Due to the inclusion of the word ‘Regina’ of the earlier mark in the contested mark, the visual, aural and conceptual similarities between the signs are undeniable and will be perceived by consumers. The signs only differ in the additional element ‘Cafè’, the letters ‘RC’ in the contested sign and in the figurative arrangements of the signs. However, the element ‘cafè’ is considered to be descriptive and non-distinctive in relation to most of the relevant goods at hand and will be attributed less weight than to the word element ‘Regina’, which is inherently distinctive. Moreover, the letters ‘RC’ of the contested mark will most likely be perceived as an abbreviation of ‘Regina Cafè’ by reason of the fact that they reproduce the first letter of each word of that combination. Even though the mentioned letter combination does not have a counterpart in the earlier mark, the Opposition Division considers that the presence of the common word ‘Regina’ already leads to an overall similarity.

In addition, as already shown above, the earlier mark has been found to enjoy a high degree of recognition in the Portugal in connection chocolates, sweetmeats (candy) and confectionary in Class 30. 

Turning to the relevant goods and services, the contested application seeks protection for goods in Classes 5 (Sugar substitutes for diabetics; Artificial sweeteners adapted for diabetics) and Class 30 covering different types of coffee, coffee substitutes, tea         or herbal preparations, coffee flavourings and sweeteners.

Thirdly, it is admitted that the contested goods are dissimilar to the earlier reputed goods. 

However, it is recalled that Article 8(5) EUTMR requires neither identity/similarity of the goods and/or services nor a likelihood of confusion, but explicitly grants protection against dissimilar goods and/or services. Article 8(5) EUTMR aims at protecting the advertising function of the trade mark and the investment made in creating a certain brand image by granting protection to reputed trade marks, irrespective of the similarity of the goods or services, provided it can be demonstrated that the use of the contested application without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.

In the view of the Opposition Division, there is a clear connection between the reputed goods and the contested goods in Class 30 at hand since they are all foodstuffs and they are most commonly found in the same shops (for example in grocery stores, specialized chocolate shops and even coffee or tea shops). The goods can be used in the same way, for example as ingredients in confectionery (coffee, cocoa, tea can all be used for confectionery as an ingredient or as aroma), they can be used in combination (chocolate coffee drink, liquid chocolate layered on top of a coffee drink, chocolate tea blend, herbal teas combined with chocolate, etc.) or can be served together (coffee accompanied with chocolate or chocolate candy). The goods share the same end users which is public at large. Therefore, it is not inconceivable that the consumer shopping for different kinds of coffee and coffee substitutes, tea and cocoa in a supermarket would purchase these goods at the same time, and, thereby, would be confronted with the two trade marks at the same time.

The connection can also be found with the contested sugar and sugar substitutes for medical purposes in Classes 5 and 30 and the reputed goods since they are all sweet foodstuffs that can be found in the same retail stores. Moreover, the contested goods are normally also one of the ingredients of chocolates and confectionery.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙        it is detrimental to the repute of the earlier mark;

∙        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent, among others, claims the following:

• The use of the trade mark ‘RC Regina Cafe’ would take unfair advantage of the distinctive character or reputation of the earlier mark REGINA or would be detrimental to it, since the trade mark REGINA may be easily identified or recognised by the average consumer at least in Portugal. Thanks to the excellent quality of the products it covers and the continuous marketing campaign releases in newspapers the mark ‘Regina’ is one of the best known chocolates trade mark in Portugal and one of the leading trade marks in the chocolate sector.
• The use of a similar trade mark will be associated to the goods offered by the opponent and, thus will be detrimental to the distinctive character and to the reputation of the earlier mark ‘Regina’. The trade mark is intensively and exclusively used for more than 90 years for a large variety of chocolates. As the trade mark ‘Regina’ is so familiar to the general public regarding the goods concerned, it is very likely that it associates a very similar mark, identified by the same word ‘Regina’ to the earlier mark and that may be detrimental to the distinctive character and high reputation of the earlier mark and would also take an unfair advantage of the earlier mark.
• The existence of both marks in the market would cause definitely and categorically harm and serious loss to the Opponent, as the pubic would certainly assign the goods of the contested mark to the same corporative origin.

Before examining the opponent’s claim, it is appropriate to recall that the opposition is directed against the following goods

Class 5:        Sugar substitutes for diabetics; Artificial sweeteners adapted for diabetics.

Class 30:        Ground coffee; Coffee [roasted, powdered, granulated, or in drinks]; Decaffeinated coffee; Roasted barley and malt for use as substitute for coffee; Prepared coffee and coffee-based beverages; Instant coffee; Cappuccino; Coffee capsules; Coffee in whole-bean form; Ground coffee beans; Roasted coffee beans; Chicory [coffee substitute]; Chicory for use as substitutes for coffee; Chicory and chicory mixtures, all for use as substitutes for coffee; Hot chocolate; Mixtures of coffee essences and coffee extracts; Mixtures of coffee and malt; Mixtures of coffee and chicory; Mixtures of malt coffee with coffee; Mixtures of coffee; Mixtures of malt coffee with cocoa; Chicory mixtures, all for use as substitutes for coffee; Mixtures of malt coffee extracts with coffee; Tea mixtures; Preparations for making beverages [chocolate based]; Preparations for making beverages [tea based]; Tea; Artificial coffee; Chicory based coffee substitute; Vegetable based coffee substitutes; Black tea [English tea]; Tea for infusions; Theine-free tea; Tea (Non-medicated -) sold loose; Green tea; Japanese green tea; Aromatic preparations for making non-medicated tisanes; Preparations of chicory for use as a substitute for coffee; Roasted barley tea [mugicha]; Cocoa mixes; Cocoa preparations for use in making beverages; Herbal preparations for making beverages; Chicory extracts for use as substitutes for coffee; Coffee extracts for use as substitutes for coffee; Extracts of coffee for use as flavours in beverages; Chocolate extracts; Chocolate extracts for the preparation of beverages; Tea extracts; Tea extracts (Non-medicated -); Herbal infusions; Filters in the form of paper bags filled with coffee; Unroasted coffee; Iced coffee; Malt coffee; Coffee; Cocoa for use in making beverages; Cocoa [roasted, powdered, granulated, or in drinks]; Chocolate coffee; Flavoured coffee; Freeze-dried coffee; Tea bags; Coffee bags; Prepared coffee beverages; Cocoa powder; Instant cocoa powder; Aerated beverages [with coffee, cocoa or chocolate base]; Coffee-based beverages; Coffee flavorings [flavourings]; Sugar; White sugar; Granulated sugar; Castor sugar; Raw sugar; Brown sugar; Natural sweeteners; Natural sweeteners in the form of fruit concentrates.

As seen above, the earlier trade mark was found to have a reputation for:

Class 30:        Chocolates, sweetmeats (candy) and confectionary.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

In respect of unfair advantage, the opponent’s arguments are the following:

‘The opponent developed over several years a constant high quality image. Therefore the common existence of both trade marks in the market would cause definitely and categorically harm of the contested mark. It is clear that when using a trade mark ‘Regina’, the applicant pretends to associate a high quality image, the know-how and to other positive elements relative to the goods designated by the earlier mark ‘Regina’.

‘The fact that the signs are very similar and that the reputation of the earlier mark is of a such a high degree, there is a clear possibility of an association of the two marks by the consumer, in the sense that perception of the one will bring to mind the memory of the other. Both marks are aimed at public at large, namely consumers buying foodstuffs. Therefore, in the case at hand the public which is already familiar with the earlier mark is also exposed to the later mark. The common existence of both trade marks in the market would cause unfair competition acts, the applicant would get unlawful benefits and the opponent would suffer all types of losses and harm. ’

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.)

In the first place, it has to be recalled that the contested goods in Classes 5 and 30 are all connected to the earlier reputed goods, as explained in section c) above.

In the second place, the Opposition Division notes that the earlier mark enjoys a strong reputation Portugal in connection with chocolates, sweetmeats (candy) and confectionary. Dominating the Portuguese chocolate market for years, the mark  is instantly identified by consumers in Portugal with one of the most popular chocolate brand[s].

Considering the similarity of the signs and the relationship between the goods at issue, it seems inevitable that the image of the earlier mark and the characteristics that it projects (reputation for quality chocolate), would be transferred to the applicant’s goods if they were marketed under the contested sign .

An average consumer buying foodstuffs who is already familiar with the earlier mark, is also exposed to the latter mark in the same supermarkets; it is not inconceivable that this end user would purchase these goods at the same time.

In this way, the contested sign would receive an unfair ‘boost’ as a result of being linked with the opponent’s mark in the minds of consumers in Portugal. The marketing of the applicant’s goods would be made easier, as its mark contains a key element that will be recognised by the relevant public. This element possesses not only some reputation but also a strong inherent distinctive character. The fact, that the element ‘Regina’ is accompanied by the wording ‘RC’ and 'Cafè’ will not diminish this recognition because the public will immediately perceive the meaningful character of the word ‘Café’ and would perceive the letters ‘RC’ as an abbreviation of ‘Regina Cafè’ by reason of the fact that it reproduces the first letter of each word of that combination. In other words, the considerable reputation of the earlier mark makes it highly likely that consumers will instantly pick up the element ‘Regina’ when faced with goods bearing the contested sign, thus linking them with the goods of the opponent and the positive image they convey. Consequently, there is a high risk that the contested sign, intentionally or unintentionally, will benefit from the strong reputation it possesses.

Therefore, the Opposition Division considers that, in view of the substantial exposure of the relevant consumers to the opponent’s reputed earlier mark, in relation to the goods for which a reputation has been found and taking into account the similarity of the marks, there exists a high probability that the use without due cause of the contested trade mark in respect of the above contested goods in Classes 5 and 30 may acquire some unearned benefit and lead to free-riding, that is to say, it would take unfair advantage of the distinctive character or the repute of the earlier trade mark.

For the sake of completeness, it has to be noted that the applicant argues that its EUTM has reputation. According to the applicant its mark was founded in 1959 and with its unique bend started to be the leader in Brescia (the largest city in Lombardy, Italy). More than 900 clients have trusted ‘RC REGINA CAFÉ’s business and their unique blend. By offering quality and professional service, ‘RC Regina Cafè today’ is in a position to offer an excellent "Made in Italy" coffee at very competitive rates. 

With respect to the applicants claim, the Opposition Division notes that the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM. Therefore, the applicant’s claim must be dismissed.

Other types of injury

The opponent also argues that the use of the contested trade mark would be detrimental to, the distinctive character and repute of the earlier trade mark. As seen above, encroachment upon reputation is an essential condition of applicability of Article 8(5) CTMR which may take three different forms. For an opposition to be well founded, in this respect, it is sufficient that only one of such forms is found to take place. As seen above, in the present case the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark. It follows that there is no need to examine whether other forms also apply.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(5) EUTMR it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.

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

Lars HELBERT

Janja FELC

Natascha GALPERIN

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.