Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 20/07/2018

Roberta Comunian

60 BULLAr Road

Southampton Hampshire so181gs

REINO UNIDO

Application No:	017874004
Your reference:
Trade mark:
Mark type:	Figurative mark
Applicant:	Roberta Comunian 60 BULLAr Road Southampton Hampshire so181gs REINO UNIDO

1. The Office raised an objection on 28/03/2018 pursuant to Article 7(1) (g) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is deceptive, for the reasons set out in the attached letter.

2. The applicant submitted its observations on 15/05/2018 and these may be summarised as follows:

• The mark is a direct translation of the Italian name of the product “Caffe’ d’orzo” (lit. coffee of barley). Since the brand is an international trade mark the brand “Orzo Coffee” is being used on packaging and on the applicant’s website. However, the brand is never used as the only information provided to the consumer but each time additional straplines are used on the packaging to describe the content. A photo of packaging is attached. Therefore at no time the use of the logo is potentially deceptive of the content.

• An identical mark has been registered in the UK and in Italy.

• The applicant has been trading for seven years in the UK and never received any complaints from customers. The communication is always transparent and in the ingredient list it is clear that the product is made from 100% roasted barely.

3. Pursuant to Article 75 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.

The Office appreciates that the applicant is not deliberately trying to deceive its consumers and that additional straplines are used on packaging to clearly indicate that the goods are coffee substitutes made from barley.

However, the Office has to examine the mark in the way it has been applied for. In the case at hand, the figurative mark includes the words “Orzo Barely” with no further information. An Italian consumer would immediately perceive that the word “Orzo” refer to “barely” and would not be deceived. Likewise, had the mark applied for been “Caffe’ d’orzo” there would not be any risk of deception, neither among Italian-speaking nor English-speaking consumers.

The average English-speaking consumer on the other hand would not understand that “Orzo” refer to “barely” but would perceive it as a made up brand for COFFEE. When seeing the mark “Orzo Coffee”, with no additional information on the label, it is likely that an English-speaking consumer with no knowledge of Italian would be led to believe that the goods inside the packaging is in fact proper coffee and not some substitute made of barley.

The practice of the Office is clear and consistent in this respect. See the Office´s Guidelines Part B, Examination, Section 4, Absolute Grounds for refusal, Chapter 8, Deceptive Trade Marks, where reference is made to among others case R 1692/2014-1 CAFFÈ VELOCE (fig.) where the Board considered that the consumer would falsely believe that the tea, cocoa, artificial coffee offered by the applicant contained coffee. The mark would give the consumer false information about the ingredients of the goods and for that reason it is deceptive.

See also Case R 954/2015-1 CAFFÈ NERO (fig.) where the Boards of Appeal considered that “consumers are likely to believe that the goods are or contain black coffee while this would not in fact be the case. The goods are sold in packaging which is quite similar to that used for coffee. Consumers may often buy these goods rather hastily and will not indulge in analysing the wording on the packaging. It is, therefore, likely that they will choose these goods from the shelf in the erroneous belief that they are or contain coffee. Therefore, the Board concurs with the analysis of the contested decision with regard to the refusal under Article 7(1)(g) CTMR in respect of ‘tea, cocoa, coffee substitutes; herb tea; tea beverages; cocoa and cocoa-based preparations; cocoa beverages”.

As regards the national decisions referred to by the applicant, according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

Moreover, the UKIPO has a different interpretation of what is deceptive and what is not.

4. For the abovementioned reasons, and pursuant to Article 7(1)(g) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 017874004 is hereby rejected for all the goods claimed.

According to Article 59 EUTMR, you have 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.

Cecilia ALIN