OPPOSITION No B 3 066 317

Kaffa - Armazéns De Café, Limitada, Urbanização Industrial Entre Abóboda E Trajouce, Lote 18, Armazém 1-A, Abóboda, 2785 202 São Domingos De Rana, Portugal (opponent), represented by Simões, Garcia, Corte-Real & Associados - Consultores, LDA., Rua Castilho, 167, 2º andar, 1070-050 Lisboa, Portugal (professional representative)

a g a i n s t

Stelios Anastasiou, Limassol Avenue 67, Vision Tower 4th Floor, 2121 Nicosia, Cyprus (applicant).

On 20/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 317 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 926 716 . The opposition is based on Portuguese trade mark registration No 453 072 ‘KAFFA COFFEE’. The opponent invoked Article 8(1)(a) and (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 for food; tea.

The contested goods are the following:

Class 30: Coffee.

Coffee is identically contained in both lists of goods.

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 are directed at the public at large for which the degree of attention is 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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark consists of the verbal elements ‘KAFFA COFFEE’. The term ‘KAFFA’ has no meaning in the relevant territory and as it bears no relation to the goods, it is normally distinctive. Despite being an English word, the term ‘COFFEE’ will be understood by the relevant consumer in Portugal given the widespread use of this word in Portugal and its close similarity to the corresponding Portuguese word café. As the relevant goods are coffee, this term is non-distinctive thereof.

The contested sign is a figurative mark consisting of the verbal element ‘KAWA’, in white slightly-stylised lettering, above which is placed a highly-stylised letter ‘K’ surrounded by a white circle, and beneath which, in a smaller size, is placed the word ‘COFFEES’ also in white lettering between two white hyphens, all the aforesaid appearing against a square green background.

The word ‘KAWA’ has no meaning in Portuguese and, bearing no relation to the relevant goods, is normally distinctive thereof. The verbal element ‘COFFEES’ is non-distinctive of the relevant goods (coffee) as explained above. Although the stylised letter ‘K’ is distinctive, it will be perceived by the consumer as a reference to the first letter of the verbal element ‘KAWA’ and so it will play an ancillary role to such verbal element. The said white circle, hyphens and coloured background are mainly decorative in nature and so will play a minor role in the visual perception of the contested sign.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually, there are significant differences between the signs at issue.

Although they coincide in the letter string ‘KA**A’, the visual impact of the double letter ‘FF’ in the verbal term ‘KAFFA’ of the earlier mark and the letter ‘W’ of the verbal term ‘KAWA’ of the contested sign - which is unusual in Portuguese - will be noticed by the relevant consumer.

While the signs coincide also in the letter string ‘COFFEE’, this verbal element is overshadowed by the larger verbal element ‘KAWA’ and is non-distinctive of the goods, as explained above, and so will play little or no role in the visual perception.

Even though the stylised letter ‘K’ in the contested sign will play merely an ancillary role to the term ‘KAWA’, as referred to above, nevertheless the relevant consumer will not fail to notice it, taking into account its relative size and prominent position above the verbal elements of the contested sign.

Based on the above, it is considered that the signs at issue are visually similar to a low degree.

Aurally, the earlier mark will be pronounced /ka-ffa-co-ffee/ while the contested sign will be pronounced /ka-wa-co-ffees/. While the sound of the first syllable is the same, the second syllable is completely different - /ffa/ vs /wa/ which will be noticed immediately by the relevant consumer.

The fact that the sound of the respective verbal elements ‘COFFEE’ and ‘COFFEES’ is almost identical is of little importance in the overall aural assessment of the signs given the non-distinctive nature of those elements.

While it cannot be ruled out that the stylised letter ‘K’ of the contested sign will be pronounced, the Office takes the view that, for the vast majority of the relevant public, it will not be sounded given, as explained above, that it will play merely an ancillary role to the verbal element ‘KAWA’ of the contested sign.

On the basis of the above, it is considered that the signs at issue are phonetically similar to a below-average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the coinciding word ‘COFFEE’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal elements ‘KAFFA’ and ‘KAWA’ respectively, which have no meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 the non-distinctive element ‘COFFEE’ in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The signs at issue are visually similar to a low degree and phonetically similar to a below-average degree with no conceptual assessment being applicable. The goods are identical, the earlier mark as a whole is normally distinctive, and the degree of attention of the relevant consumer is average.

Account is taken of the fact that the goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T 488/07, Egléfruit, EU:T:2010:145). Here, the Office notes that the degree of visual similarity is merely low.

In the present case the Opposition Division considers that the similarities between the signs concern either elements that are not distinctive or elements that are secondary within the overall impression given by the signs. Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public.

Considering all the above, even considering that the goods are identical there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

COSTS

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

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Boyana NAYDENOVA

Kieran HENEGHAN

Ali KÜÇÜKŞAHİN

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.