Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 20/04/2018

MACLACHLAN & DONALDSON

2b Clonskeagh Square, Clonskeagh Road,

Dublin D14 V0N2

IRLANDA

Application No:	017302911
Your reference:	PM/LD/T28611.EU
Trade mark:	JAVA CITY COFFEE HAND ROASTED
Mark type:	Figurative mark
Applicant:	BEWLEY'S LIMITED Northern Cross, Malahide Road Dublin 17 IRLANDA

The Office raised an objection on 15/02/2018 pursuant to Article 7(1)(g) and Article 7(2) EUTMR because it found that the trade mark applied for is partially deceptive of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 14/03/2018, which may be summarised as follows.

1. The applicant refutes that a mark containing the term ‘coffee’ can deceive the public in terms of the objected goods, namely tea; cocoa; artificial coffee; tea based beverages; herbal tea and hot chocolate.

2. Account must be taken in the market reality. The applicant argues that it is common for companies which produce coffee and whose names include the word ‘coffee’ to produce and sell the objected goods. The relevant consumer will perceive ‘coffee’ as part of the trade mark and not as an informative indication about the kind of the product sold.

3. The Office has registered numerous marks containing the word ‘coffee’ for the goods at issue. The refusal makes no sense in light of the official guidelines and practice of EUIPO.

Pursuant to Article 94 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Article 7(1)(g) EUTMR provides that marks that are of such a nature as to deceive the public as to the nature, quality or geographical origin of the goods or services, will not be registered.

According to the case-law relating to Article 3(1)(g) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks [now Article 4(g) of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015] (TMD), the wording of which remains identical to that of Article 7(1)(g) EUTMR, the circumstances for refusing registration referred to in Article 7(1)(g) EUTMR presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (judgment of 30/03/2006, C-259/04, Elizabeth Emanuel, EU:C:2006:215, § 47).

In the present case, the sufficiently serious risk that the consumer will be deceived has been established in the communication of 15/02/2018 which took into account the reality of the market of the objected goods. It must be noted that those goods have the same distribution channels and sale outlets (store departments, bars, cafeterias and restaurants) and are sold in the same self and/or fridge racks of a store.

The Office disagrees with the applicant that the term ‘coffee’ would be perceived as part of the trade mark and not as an informative indication about the kind of the product. The relevant part of the sign would clearly be deceptive when used in connection with the objected goods in Class 30, as it conveys clear information indicating that the products designated under this sign are or contain coffee whereas the goods to which an objection has been raised do not contain or are not coffee. It must be assumed that the public will expect the goods to which an objection has been raised are or contain coffee. The sign in question would certainly be susceptible to deceive as to the nature and quality of the goods as consumers might purchase the products listed above based on the perception that they are and/ or contain coffee as suggested by the trade mark while in reality they are inter alia, different types of tea, cocoa and coffee substitutes.

The Office cannot agree with the applicant that the refusal on the mark makes no sense in light of the official guidelines and practice of EUIPO. It is the practice of the Office to object for deceptiveness for goods such as tea and cacao if the word ‘coffee’ is contained in the mark. This is illustrated clearly in the Office’s guidelines (Chapter 8 Deceptive Trade Marks) as well as by relevant case law. For instance, in the R-1692/2014-1 Caffè Veloce, the Board of Appeals has found that “the mark would give the consumer false information on the ingredients of the goods and for that reason is deceptive”.

Moreover, in the judgments of 27/10/2016, T-29/16, CAFFÈ NERO, EU:T:2016:635, § 48 and 27/10/2016, T-37/16, CAFFÈ NERO (fig.), EU:T:2016:634, § 53, the General Court found that a possible perception of the mark by the relevant consumer in a non-deceptive manner is irrelevant, once — and thus provided that — the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived has been established.

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to settled case‑law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

Besides, the mere fact that the Office has at some point registered a trade mark, perhaps in error, does not entitle even the same applicant to stake out a claim for subsequent registrations. ‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 67).

The Office points out that it has refused numerous marks containing the term ‘coffee’ for the objected goods. To name only a few, the Office cites the examples of recent refusals of the figurative marks: 16 99 9997 – CØFFE, 17 175 217 - coffee perfect, 17 068 388 - YOUR COFFEE, 16 523 854 - CAFE AALTO, and 17 092 719- PAUL LE CAFÉ.

For the abovementioned reasons, and pursuant to Article 7(1)(g) and Article 7(2) EUTMR, the application for European Union trade mark No 17 302 911 is hereby rejected for the following goods:

Class 30 Tea; cocoa; artificial coffee; tea based beverages; herbal tea; hot chocolate.

The application may proceed for the remaining goods and services.

According to Article 67 EUTMR, you have 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 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.

Aliki SPANDAGOU