EL DIVO Cafe | Decision 2818550
Date Published: Oct 22, 2017
OPPOSITION No B 2 818 550
Chocolaterie De L'Opera, 846, Chemin du Barret, 13160, Châteaurenard, France (opponent), represented by IPSO, 5, rue Murillo, 75008, Paris, France (professional representative)
a g a i n s t
Elke Wehr, Ul.Lokvice 22, Murter 22243, Croatia (applicant).
On 17/10/2017, the Opposition Division takes the following
1. Opposition No B 2 818 550 is partially upheld for the following contested goods, namely:
Class 30: Coffee.
2. European Union trade mark application No 15 827 521 is rejected for all the above goods. It may proceed for the remaining goods, namely Class 30 ‘Roasted coffee beans; coffee in whole-bean form’.
3. Each party bears its own costs.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 827 521 , namely against goods in Class 30.
The opposition is based on European Union trade mark registration No 8 463 432 ‘DIVO’.
The opponent invoked Article 8(1)(b) EUTMR.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.
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.
- The goods
The goods on which the opposition is based are the following:
Class 30: Chocolate, chocolate products
The contested goods are the following:
Class 30: Roasted coffee beans; coffee; coffee in whole-bean form
The opponent argues that the respective goods are highly similar based on them having the same end users, share distribution channels and are sold in close proximity to one another. Further they have the same method of use, they are in competition and are complementary.
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.
Contested goods in Class 30
The contested coffee covers the prepared drink as well as the coffee granules in their raw form. It is a drink which is consumed by the general public. The opponent’s chocolate products include goods such as drinking chocolate, in its finished and raw form. Therefore, they are similar in nature since they are to be drank or added to water or milk in order to drink. They would be sold in close proximity to one another and likely to share distribution channels. Further, the respective goods are in competition with one another. They are similar to an average degree.
The contested roasted coffee beans; coffee in whole-bean form are goods which need to be ground down then filtered and added to water in order to make the drink coffee. Since the aforementioned contested goods are not a drink per se but the component part of the drink, they differ in nature to chocolate products (which can be interpreted to include drinking chocolate). They are unlikely to have the same producers; but may share distribution channels. In other words, those seeking roasted coffee beans, coffee in whole-bean form are not the same consumers who are likely to consume drinking chocolate. They would not be in competition with one another and they are not complementary. Therefore, roasted coffee beans; coffee in whole-bean form are considered to be dissimilar opponent’s chocolate products.
- 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 similar to an average degree are daily consumable goods which are directed at the public at large. The degree of attention will therefore be average.
- The signs
Earlier trade mark
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.
The common element DIVO is meaningful in certain territories, for example in those countries where Spanish is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.
The earlier trade mark is a word mark consisting of ‘DIVO’. It is a word which will be understood by the Spanish-speaking public as meaning ‘a star’ or ‘an opera singer’. Since it has no relation to the relevant goods, it is distinctive.
The contested sign is a figurative mark consisting of numerous elements. The verbal element is ‘El Divo Cafe’ which is written in a stylised font with ‘Café’ below Divo slightly smaller font. Above the words is a figurative element consisting of the fanciful depiction of a lady holding a hot cup of coffee on a backdrop of coffee beans. Since the contested sign generally covers coffee, the figurative elements of the sign are not considered to be distinctive.
The word ‘El’ in the contested sign is the definite article meaning ‘the’. Therefore, this word would be attributed less importance in the overall impression of the sign. As stated above, the word ‘Divo’ is a masculine noun meaning either ‘star’ or, in conjunction with ‘El’ it could mean ‘the male opera singer’. The word ‘café’ means coffee so in relation to the goods in question it is descriptive and therefore has no trade mark significance.
It should be noted 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).
The figurative elements within the contested sign do occupy around half of the contested sign and is therefore dominant but is not considered to be distinctive. The word ‘Divo’ is the most distinctive and eye-catching element in the overall impression produced by the sign with ‘El’ and ‘café’ being less dominant.
Visually, the signs coincide in ‘DIVO’ which is the whole of the earlier trade mark and the distinctive element of the contested sign. However, they differ in ‘EL’, the descriptor ‘CAFÉ’ and the figurative elements. Taking into account what has been stated above about the distinctiveness and dominance of the various elements of the contested sign, it is considered that the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the word element ‘DIVO’. The pronunciation differs in the definite article ‘El’ and the descriptor ‘Café’ in the contested sign which have no counterpart in the earlier sign. The figurative elements in the contested sign will not be enunciated. Therefore, the signs are aurally similar to an above average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as ‘Star’ or ‘an opera singer’, 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.
- 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.
- Global assessment, other arguments and conclusion
The contested goods are either similar to an average degree to the opponent’s goods or dissimilar. The relevant public is composed of the general public whose level of attention is considered to be average. The inherent distinctiveness of the earlier mark is normal.
The signs are visually similar to an average degree, aurally similar to an above average degree and conceptually similar to a high degree. The differences between the signs are confined to the figurative elements and the definite article ‘El’ in the contested sign which has less trade mark significance. The earlier mark is represented in its entirety within the contested sign where it has a distinctive and independent role.
Account is taken of 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).
Taking all of the above into consideration, the Opposition Division considers that there is a likelihood of confusion on the part of the Spanish-speaking part of the public because the differences between the signs are confined to non-distinctive or secondary elements and aspects. 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.
It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
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.