OPPOSITION No B 3 017 178

Kaffa - Armazéns de Café, Limitada, Rua São Sebastião, Lote 6, Cabra Figa, 2635-448 Rio de Mouro, Portugal (opponent), represented by Simões, Garcia, Corte-Real & Associados - Consultores, Lda., Rua Castilho, 167, 2º andar, 1070-050 Lisbon, Portugal (professional representative)

a g a i n s t

Albert Oehlen, Rotenwies 58, 9056 Gais, Switzerland (applicant), represented by Zirngibl Rechtsanwälte Partnerschaft mbB, Brienner Str. 9, 80333 Munich, Germany (professional representative).

On 29/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 017 178 is partially upheld, namely for the following contested goods:

Class 30: Coffee, tea, cocoa and artificial coffee; sugar, honey, treacle; coffee-based beverages; prepared coffee beverages; tea-based beverages; beverages based on coffee substitutes; artificial coffee; coffee flavorings [flavourings]; artificial coffee; coffee concentrates; coffee-based beverages; artificial coffee; tea-based beverages; tea extracts (non-medicated-); tea substitutes; tea-based beverages; tea mixtures; coffee-based beverages.

Class 32: Other non-alcoholic beverages; fruit beverages and fruit juices; syrups; energy drinks; cola; energy drinks containing caffeine; energy drinks containing tea.

2. European Union trade mark application No 17 214 404 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 214 404 for the figurative mark , namely against all the goods in Classes 30 and 32. The opposition is based on Portuguese trade mark registration No 453 072 for the word mark ‘KAFFA COFFEE’. 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 30: Sugar; natural sweeteners; sugar candy for food; coffee; coffee flavourings; coffee based beverages; unroasted coffee; candy (sugar) for food; tea.

The contested goods are the following:

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, savoury sauces; spices; ice; coffee-based beverages; prepared coffee beverages; tea-based beverages; beverages based on coffee substitutes; artificial coffee; coffee flavorings [flavourings]; artificial coffee; coffee concentrates; coffee-based beverages; artificial coffee; tea-based beverages; tea extracts (non-medicated-); tea substitutes; tea essences; tea-based beverages; tea mixtures; coffee-based beverages.

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages; energy drinks; cola; energy drinks containing caffeine; energy drinks containing tea.

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

Tea; coffee-based beverages (listed three times in the applicant’s list of goods); coffee flavorings [flavourings]; coffee; sugar; prepared coffee beverages are identically contained in both lists of goods (including synonyms).

The contested treacle is included in the broad category of the opponent’s natural sweeteners. Therefore, they are identical.

The contested tea-based beverages (listed three times); tea extracts (non-medicated); tea mixtures are included in the broad category of the opponent’s tea. Therefore, they are identical.

The contested coffee concentrates are included in the broad category of the opponent’s coffee. Therefore, they are identical.

The contested tea substitutes are similar to a high degree to the opponent’s tea because they coincide in the method of use, producers, distribution channels and end users. Furthermore, they are in competition.

The contested beverages based on coffee substitutes and artificial coffee (listed four times) are similar to a high degree to the opponent’s coffee based beverages because they coincide in the method of use, producers, distribution channels and end users. Furthermore, they are in competition.

The contested honey is similar to the opponent’s sugar because they coincide in the distribution channels and end users. Furthermore, they are in competition.

The contested cocoa is similar to the opponent’s coffee because they coincide in the method of use, distribution channels and end users. Furthermore, they are in competition.

Although, the contested tea essences and the opponent’s tea 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.

The contested confectionery; rice; mustard; spices; tapioca and sago; flour and preparations made from cereals; bread, pastry; yeast, baking-powder; vinegar, savoury sauces; edible ices; salt; ice are dissimilar to the opponent’s goods. They differ in the nature and purpose, as well as producers, distribution channels and end users. They are neither complementary nor in competition.

Contested goods in Class 32

The contested fruit beverages and fruit juices; energy drinks; cola; energy drinks containing caffeine; other non-alcoholic beverages are similar to the opponent’s coffee. These goods are various non-alcoholic beverages, which may be in competition with one another. They may be consumed on the same occasions and can be served together in the same establishments, such as coffee shops. They can have the same producers, relevant public and distribution channels.

For the same reasons the contested energy drinks containing tea are similar to the opponent’s tea.

The contested syrups are similar to the opponent’s sugar because they coincide in the distribution channels and end user. Furthermore, they are in competition.

The contested other preparations for making beverages are similar to a low degree to the opponent’s coffee because they have the same methods of use, distribution channels and end users.

The contested beers; mineral and aerated waters are dissimilar to the opponent’s goods. They differ in the nature and purpose, as well as producers, distribution channels and end users. They are neither complementary nor in competition.

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 various degrees) are directed at the public at large.

The degree of attention is considered average.

3. The signs

KAFFA COFFEE
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).

The earlier sign is a word mark, ‘KAFFA COFFEE’. The verbal element ‘KAFFA’ is meaningless for the relevant public. It has, therefore, an average degree of distinctiveness.

The verbal element ‘COFFEE’ has no meaning in Portuguese. However, it is an English word meaning ‘a hot drink made from the roasted and ground seeds (coffee beans) of a tropical shrub’ (information extracted from Oxford Dictionaries on 26/10/2018 at https://en.oxforddictionaries.com/definition/coffee). The Court has stated that the knowledge of English, admittedly to varying degrees, is relatively widespread in Portugal and that, although it cannot be claimed that the majority of the Portuguese public speaks English fluently, it may, however, reasonably be presumed that a significant part of that public has, at the very least, a basic knowledge of that language (16/01/2014, T-528/11, Forever, EU:T:2014:10, § 68). In addition, the word ‘coffee’ is widely spread on advertisement and it is well known to the public as it concerns one of the most popular drinks consumed on a daily basis by the vast majority of the public. Therefore, the English word ‘coffee’ with its respective meaning explained above will be understood by the relevant public. In respect of the relevant goods which are coffee or coffee related products this word is descriptive and thus devoid of distinctive character. In respect of the other goods covered by the earlier trade mark, although it is not directly descriptive of these goods, it will have less impact than the other word ‘KAFFA’ because these goods are often consumed in combination with coffee or they are in any case together with coffee part of the same market sector.

The contested sign is a figurative mark depicting a human’s hand wearing a watch and the verbal element ‘KAFFTEE’ in bold capitals underneath.

The verbal element ‘KAFFTEE’ is meaningless and has therefore an average degree of distinctiveness. Also the depiction of a hand and a hand watch neither describes the goods in question nor alludes to the characteristics thereof, and it is not otherwise weak or non-distinctive. However, 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 rather than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Consequently, the figurative element of the contested sign is of secondary importance.

The contested sign has no elements which can be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘KAFF’ contained in both signs. They differ, however, in the presence of the letter ‘A’ and the verbal element ‘COFFEE’ in the earlier sign as well as the figurative element and the letters ‘TEE’ of the contested sign which have no counterpart in the other sign.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark since 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.

Since the verbal element ‘COFFEE’ of the earlier sign is non-distinctive or has less impact and the figurative element of the contested sign has a secondary importance within that sign, the signs at issue are visually similar to an average degree.

Aurally, the earlier sign will be pronounced in four syllables and the contested sign in two syllables; /KA-FA-CO-FE/ and /KAF-TE/. The pronunciation of the signs coincides in the sound of the letters ‘KA’ contained in the first syllables of the signs and the sound of the letter ‘F’ which in the earlier sign forms part of the second syllable and in the contested sign of the first syllable. The signs differ in the sound of the letter ‘A’ of the second syllable as well as in the third and fourth syllables of the earlier sign and the second syllable of the contested sign which have no counterparts in the other sign.

The figurative element of the contested sign has no impact on the aural comparison of the signs, as it will not be pronounced.

Since the verbal element ‘COFFEE’ of the earlier sign is non-distinctive or has less impact, 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. Insofar as the earlier sign will be associated with the meaning of the word ‘coffee’ and the contested sign with a human’s hand wearing a hand watch, 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 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, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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 goods in question are partly identical, partly similar (to various degrees) and partly dissimilar. The signs are visually similar to an average degree, aurally similar to an above average degree and conceptually not similar. The degree of attention of the relevant public is average and the earlier mark is normally distinctive.

The signs coincide in the first three letters at their beginnings which form part of verbal elements with normal distinctiveness. The additional verbal element of the earlier sign and the figurative element of the contested sign have less impact and are of secondary importance for the reasons set out above in part c) of this decision.

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The similarities between the marks consisting in their identical beginnings prevail over their differences. On account of the similarity of the signs, the relevant consumers are likely to believe that the goods found identical or similar, originate from the same undertaking or from economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Portuguese trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The opposition is not successful insofar as the goods that are similar to a low degree are concerned. In accordance with the interdependence principle the signs at issue are not sufficiently similar to outweigh the low degree of similarity of the goods in question so that likelihood of confusion cannot be established in respect of these goods.

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.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) 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 for only some 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

Swetlana BRAUN

Alexandra APOSTOLAKIS

Martin EBERL

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.