OPPOSITION No B 2 596 693

Christoph Jung, Breitenweg 70, 56332 Dieblich, Germany (opponent), represented by Görg, Kennedyplatz 2, 50679 Köln, Germany (professional representative)

a g a i n s t

Coffeebrands Switzerland A.G., Bahnhofstrasse 10, 6300 Zug, Switzerland (applicant), represented by Παναγιωτησ Περιβολαρησ, ΑΓΙΟΥ ΝΙΚΟΛΑΟΥ 41-43, 26221 ΠΑΤΡΑ, Greece (professional representative).

On 03/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 596 693 is upheld for all the contested services.

2. European Union trade mark application No 14 107 601 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 107 601. The opposition is based on European Union trade mark registration No 11 852 878. 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 services

The services on which the opposition is based are the following:

Class 35: Advertising; business management; business administration; television advertising; radio advertising; marketing; direct mail advertising; publication of publicity texts; layout services for advertising purposes; on-line advertising in computer networks; organisation and arranging of advertising events; organization of exhibitions for commercial or advertising purposes; bill-posting; publication of printed matter (including in electronic form), for advertising purposes; dissemination of advertising matter; writing of publicity texts.

Class 43: Food and drink catering; providing of food and drink and temporary accommodation; party planning (providing of food and drink); cafés, cafeterias, canteens, restaurants and fast food restaurants (snack bars); hotels.

Class 45: Licensing of intellectual property; licensing of industrial property rights and copyright; issuing licences for franchising concepts; legal services; copyright management.

The contested services are the following:

Class 35: The bringing together, for resale purposes, of machines for making espresso and all other kinds of coffee, and parts for the aforesaid machines, coffee cups, coffee spoons and related articles, and packaged coffee of all kinds.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

The contested the bringing together, for resale purposes, of machines for making espresso and all other kinds of coffee, and parts for the aforesaid machines, coffee cups, coffee spoons and related articles, and packaged coffee of all kinds consists in retail and wholesale of various goods related to the preparation and consumption of coffee, namely espresso machines and tableware or coffee itself, whether it is as a raw ingredient or a prepared drink. It cannot be excluded that undertakings’ own establishments in which they sell espresso machines and goods related to coffee as well as their own coffee, also provide coffee to consume on their premises, or sell coffee to take away. Therefore, the aforementioned service could be provided by the same undertaking and target the same customers as the opponent’s cafés in Class 43. Consequently, the services under comparison are considered similar.

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 services found to be similar are directed at the public at large as well as business customers with specific professional knowledge or expertise. The degree of attention is considered to vary between average and above average depending on the cost of the relevant services.

3. The signs

MeGusta
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).

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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-Spanish- and non-Greek-speaking parts of the relevant public.

The earlier mark is the word mark ‘MeGusta’. In the case of word marks, the word as such is protected, not its written form. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is depicted in lower case or upper case letters or a combination of these.

The contested sign is a figurative mark composed of the verbal element ‘Megisto’ written in a stylised blue font above the verbal element ‘CAFFÈ’ written in much smaller standard blue upper case letters. The aforementioned elements are depicted against a rectangular white background.

The earlier mark has no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

The verbal element ‘CAFFÈ’ of the contested sign will be understood throughout the relevant territory as referring to ‘a beverage made by percolation, infusion, or decoction from the roasted and ground seeds of a coffee plant’ or an ‘establishment or counter where coffee and usually light refreshments are served’ (information extracted from the online Merriam-Webster dictionary on 13/09/2016), given that the word ‘caffè’ exists in Italian and there are very close equivalents in several official languages of the European Union, such as French and Portuguese (café), Danish and Swedish (kaffe), German (Kaffee), English (coffee), Dutch (koffie) or Romanian (cafea). Moreover, the relevant public is familiar with the aforementioned English and French equivalents of ‘caffè’ in connection with the services in question. Bearing in mind that the relevant services in Classes 35 and 43 are all linked to the selling of coffee, whether it is as a raw ingredient or prepared as a drink, this element is weak in relation to the aforementioned services.

Moreover, the rectangular white background is a less distinctive figurative element of a purely decorative nature.

In view of the above, the verbal element ‘Megisto’ is the most distinctive component of the contested sign. It is also the dominant element in the contested sign, as it is the most eye-catching due to its central position and size.

Visually, the earlier mark, ‘MeGusta’, and the dominant and most distinctive element of the contested sign, namely ‘Megisto’, have the same length. Moreover, they coincide in five out of seven letters: ‘MEG*ST*’. In particular, the first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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.

The earlier mark and the dominant and most distinctive element of the contested sign differ owing to isolated vowels, namely their fourth and seventh letters, ‘U’ and ‘A’ in the earlier mark versus ‘I’ and ‘O’ in the contested sign, respectively.

Moreover, although the signs differ due to the additional verbal element ‘CAFFÈ’ in the contested sign, that element is secondary because of its much smaller size in the sign; in addition, it is weak for the relevant services.

The signs also differ owing to the figurative elements of the contested sign, namely its stylised font and rectangular white background. However, the latter has a low degree of distinctive character. Moreover, 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).

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the earlier mark and the dominant and most distinctive element of the contested sign, ‘Megisto’, coincides in the sound of the sequence of letters ‘MEG*ST*’ for a significant part of the relevant public, for example the parts of the public that speak German, Hungarian, Croatian, Czech, Danish, Slovak, Slovenian, Lithuanian, Finnish, Polish, Dutch or Latvian. For these parts of the public, the signs will differ only in the sound of their fourth and seventh letters: /U/ and /A/ in the earlier mark versus /I/ and /O/ in the contested sign, respectively. For the rest of the public, the pronunciation of the consonant ‘G’ might also differ depending on the following vowel. Nonetheless, the conflicting signs will have the same rhythm and intonation.

Although the signs differ because of the additional verbal element ‘CAFFÈ’ in the contested sign, that element is secondary due to its much smaller size in the sign; in addition, it is weak for the relevant services. Therefore, it cannot be excluded that a significant part of the public will not pronounce it.

Consequently, the signs are aurally similar to an average degree.

Conceptually, neither the earlier mark, ‘MeGusta’, nor the verbal element ‘Megisto’ in the contested sign has any particular meaning for the public in the relevant territory. Therefore, they will be perceived as fanciful or foreign words.

As for the verbal element ‘CAFFÈ’ in the contested sign, reference is made to the findings above.

In the light of the foregoing, the earlier mark lacks any meaning in the relevant territory, whereas the relevant public will perceive a meaning in the contested sign as regards the element ‘CAFFÈ’, although it is a secondary and weak verbal element. 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.

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 services 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

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, Sabèl, EU:C:1997:528, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The relevant public is the non-Spanish- and non-Greek-speaking general public and professionals in the European Union. The degree of attention is considered to vary between average and above average.

The contested services are considered similar to the opponent’s services.

The earlier mark and the dominant and most distinctive element of the contested sign, namely ‘Megisto’, coincide visually and aurally in five out of seven letters, placed in the same order: ‘MEG*ST*’. The differing fourth and seventh letters are not sufficient to counteract the aforementioned similarities.

Moreover, the other differences between the signs are confined to secondary and/or less distinctive elements such as the additional verbal element ‘CAFFÈ’ or the rectangular background in the contested sign, or in components with less visual impact such as the stylised font of the contested sign.

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).

Considering all the above, there is a likelihood of confusion on the part of the non-Spanish- and non-Greek-speaking parts of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 852 878. It follows that the contested trade mark must be rejected for all the contested services.

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

Loreto URRACA LUQUE

Marta GARCÍA COLLADO

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.