OPPOSITION No B 2 584 723

Société des Produits Nestlé S.A., 1800 Vevey, Switzerland (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft mbB, am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Compañía de Elaborados de Café Elcafe C. A., Km 35 Av Juan Tanca Marengo  Guayaquil, Guayas, Ecuador (applicant), represented by Locke Lord LLP, 201 Bishopsgate, London EC2M 3AB, United Kingdom (professional representative).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 584 723 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 196 018 for the word mark ‘SiCafe’, namely against some of the goods in Class 30. The opposition is based on Portuguese trade mark registration No 167 767 for the word mark ‘SICAL’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, at this point the Opposition Division considers it appropriate not to undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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 substitutes, tea, cocoa and chocolates.

The contested goods are the following:

Class 30:        Coffee; coffee extracts and coffee-based preparations; coffee substitutes and extracts of coffee substitutes; coffee beans; unroasted coffee; ground coffee; decaffeinated coffee; instant coffee; coffee drinks; coffee beverages; coffee mixtures; flavoured coffee; roasted coffee beans; ground coffee beans; prepared coffee and coffee-based beverages; coffee based drinks; coffee in brewed form; coffee in ground form; coffee beverages with milk; ice beverages with a coffee base; filters in the form of paper bags filled with coffee; tea, tea extracts and tea-based preparations.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Coffee refers to beanlike seeds of the coffee tree and roasted coffee beans. The term in Class 30 also includes beverages consisting of an infusion of the roasted and ground or crushed seeds of the coffee tree.

Coffee, coffee substitutes, tea are identically contained in both lists of goods.

The contested coffee-based preparations; coffee beans; unroasted coffee; ground coffee; decaffeinated coffee; instant coffee; coffee drinks; coffee beverages; coffee mixtures; flavoured coffee; roasted coffee beans; ground coffee beans; prepared coffee and coffee-based beverages; coffee based drinks; coffee in brewed form; coffee in ground form; coffee beverages with milk; ice beverages with a coffee base; filters in the form of paper bags filled with coffee are included in the broad category of the opponent’s coffee. Therefore, they are identical.

The contested tea-based preparations are included in the broad category of the opponent’s tea. Therefore, they are identical.

Although the contested coffee extracts, tea extracts and extracts of coffee substitutes and the opponent’s coffee; tea and coffee substitutes, respectively, differ in their natures, they are used for the same purposes and have similar methods of use. Therefore, they are considered similar to a low degree.

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 or similar to a low degree are directed at the public at large, which displays an average degree of attention in relation to the relevant goods which are not, in general, expensive and are bought by majority of the consumer on a frequent basis.

3. The signs

SICAL	SiCafe
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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).

Both of the marks in question are word marks, each of them consisting of one verbal element. In the case of word marks, it is the words as such that are protected and not their written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters, or in a combination thereof.

Although the average consumers normally perceive a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 30).

The contested sign as a whole has no meaning in Portuguese; however the element ‘CAFE’ will be noticed by the relevant public without any difficulties. It will be understood as ‘coffee’, given that it is almost identical to the Portuguese word for coffee – ‘CAFÉ’, the difference being only the accent on the letter ‘E’. Bearing in mind that the relevant goods are coffee, coffee-based or related, this element is non-distinctive for all contested goods. The first element of the mark ‘SI’ has a few meanings, i.a. it is a musical note B, a pronoun himself, herself. It is also an old version of the word sim, which means yes in Portuguese (see https://www.priberam.pt/dlpo/si). Hence, at least a part of the relevant public will perceive one or more of the mentioned meanings. However, none of those is descriptive, allusive or otherwise weak for the relevant goods, and as such the part ‘SI’ of the contested mark is distinctive.

Visually and aurally the signs are similar to the extent that they coincide in the sequence of letters 'SICA' placed at the beginning of both signs. On the other hand, they differ in the last letter, ‘L’, of the earlier trade mark and in the last letters, ‘FE’, of the contested sign. These endings contribute to significant visual and aural differences between the two signs since they contribute to a different visual impression of both signs as well as to the different intonation and rhythm (the contested sign having an additional syllable) in case the two signs are pronounced.  

It should be also pointed out that the co-incidence in the same letters does not necessary leads to the similarity of the signs. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will share some of them, but they cannot, for that reason alone, be regarded as visually similar.

In addition, it has to be taken into account that the contested sign includes a clearly perceptible but non-distinctive part ‘CAFE’, which reduces the coincidence to the first two letters.

Therefore, the signs are visually and aurally similar to a very low degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the part ‘CAFÉ’, respectively the part ‘SI’ in the contested sign, the earlier mark ‘SICAL’ has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are 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 essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, Sabel, EU:C:1997:528, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods at issue have been found identical or similar to a low degree. The signs have been found visually and phonetically similar to a very low degree. This is because they differ significantly in their endings but also and most importantly because the part ‘CAFE’ in the contested sign is non-distinctive in relation to the goods in question, which reduces the coincidence between the two signs to the first two letters, ‘SI’. In addition, the marks have no concept in common that would lead the public to associate one with the other. All these differences are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks at issue.

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, therefore, proceeded 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, notwithstanding the identity found in respect of some of the goods in question, the Opposition Division finds that the differences between the signs, as pointed out above, prevail over the enhanced degree of distinctiveness of the earlier mark. The contested sign does not bring to mind the earlier mark, even in case the earlier mark enjoys an enhanced degree of distinctiveness since the coincidence is too minor, in signs that are relatively short and easy to grasp as a whole.

Therefore, the Opposition Division considers that the dissimilarities between the signs at hand prevail their similarities and are sufficient to offset even the identity between the goods, and hence to exclude any likelihood of confusion between the marks, including the risk that consumers might believe that the goods came from the same undertaking or from economically linked undertakings.

Taking into account all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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.

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

Lars HELBERT

Renata COTTRELL

Martin EBERL

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.