OPPOSITION Nо B 3 084 520

 

Société des Produits Nestlé S.A., 1800 Vevey, Switzerland (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft mbB, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a I n s t

 

Lorenzo Prassino, Via P. Tuozzi / Sessa Aurunca 5, 81037 Sessa Aurunca, Italy (applicant).

 

On 20/08/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 084 520 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 019 900 is rejected in its entirety.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 019 900 (figurative mark), in Classes 25, 30 and 43. The opposition is based on European Union trade mark registration No 2 793 792, ‘NESPRESSO’ (word mark). The opponent invoked Articles 8(1)(b) and 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

 

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

 

In the present case, the contested trade mark was filed on 06/02/2019. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 7: Electric coffee grinders; machines for extracting coffee, namely extraction cells.

Class 9: Coffee and coffee capsule vending machines.

Class 11: Coffee machines, coffee pots and electric percolators and parts therefor.

Class 21: Coffee grinders, non-electric; coffee machines, coffee pots and non-electric percolators and parts therefor; filters; household or kitchen utensils and containers (not of precious metal or coated therewith); articles of glass, porcelain or earthenware not included in other classes.

Class 30: Coffee, coffee extracts and coffee-based preparations; coffee substitutes and extracts of coffee substitutes; tea, tea extracts and tea-based preparations; cocoa and preparations having a base of cocoa, chocolate, chocolate products, confectionery, sweets; sugar; natural sweeteners; bakery products, bread, yeast, pastries; biscuits, cakes, desserts of vegetable origin and other desserts based on cereals (cereals predominating); pasta, baking-powder, flour, spices, and flavourings (except essential oils) included in class 30 for making desserts (cereals predominating); puddings; edible ices, products for making edible ices; honey and honey substitutes; breakfast cereals, rice, pasta, food products based on rice, flour or cereals, also in the form of cooked dishes; dressings; products for flavouring or seasoning foodstuffs, salad dressings, mayonnaise.

Class 35: Advertising and product demonstration and sales promotion of food products; distribution of food and drink by machine or by automatic machine, renting, lending and making available these machines, advice regarding the use of such machines; processing of orders and corresponding sales orders, services for advertising and direct marketing, all provided on-line in databases or on the Internet, compiling of advertisements and catalogues used as webpages on the Internet; sponsoring of entertainment, sporting and cultural activities; sponsorship of activities, in particular sporting and cultural activities; for advertising or cultural purposes.

Class 43: Hotel services, cafeterias, bars, restaurants, supply of meals to communities and canteens, organisation of the aforesaid services.

The opposition is directed against the following goods:

Class 25: Clothing.

Class 30: Coffee.

Class 43: Bar services.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by

On 08/11/2019, the opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence consists of the following documents (enclosure 1 is not listed below because it is just a list of all the enclosures):

Enclosure 2: Extract of the eSearch database concerning the earlier mark.

Enclosure 3: Extract from the Wikipedia website last edited in July 2019 concerning the ‘NESPRESSO’ brand. It indicates that Nestlé Nespresso S.A. trading as Nespresso, headquartered in Switzerland, was founded in 1986 and refers to the company’s products as being coffee machines and coffee capsules or pods, with a broad range of different machine models/coffee blends. The article indicates that one of the latest machines was launched under the name Vertuo. It was initially intended for the US market as it allowed making coffee closer to the taste of American consumers but was launched in France in 2016 and later rolled out to other countries such as the United Kingdom and Germany. According to the article, ‘Nespresso’ started as an e-commerce business and opened its first boutique in Paris as a concept store in 2000, having opened 700 boutiques in 67 countries since then. The article also mentions that a marketing campaign with American actor George Clooney has been ongoing since 2006 and refers to the company’s involvement with the environmental impact which has led it to implementing recycling programmes of the coffee capsules in several countries, France being one of those in which this program is more accessible because it is one of the countries in which most capsules are sold.

Enclosure 4: Corporate communication regarding the history of the ‘NESPRESSO’ brand, issued by Nestlé Nespresso SA in May 2016. It emphasizes the pioneering role of the company with its idea of enabling anyone to create the perfect cup of coffee. It refers to a record of continuous innovation over the last 30 years. It mentions the launch of an e-commerce website enabling 24/7 direct online ordering in the years 1995-1999, the launch of physical boutiques in 2000. According to the article, the Nespresso success is driven by a continued focus on creating highest quality coffee, long-lasting consumer relationships, new machines pushing the boundaries of innovation, coffee expertise through the creation of unique blends to delight customers, and sponsorship of prestigious events. As regards the most recent period (2013-today) the article mentions collaborations with leading chefs and sommeliers around the world and an ambition to become the highest quality and most sustainable portioned coffee brand through its ‘Positive Cup’ sustainability strategy. The timeline indicates that the products (coffee machine and coffee capsules) were first launched in Switzerland, Italy and Japan with an initial focus on the B2B sector, that in 1991 the system was launched in the household sectors in France and the US, and that the first ‘Nespresso’ concept store opened in Paris in 2000. Other landmark dates are: the launch of the first campaign with George Clooney as ambassador in 2006 (extended to the US in 2015); the opening of the flagship boutique on the Champs Elysées in Paris in 2007, the opening of the 200^th boutique in Shanghai in 2010 and other openings in, inter alia, Brussels and Munich (and later on in 2015 in Milan, Bucharest, etc. then reaching more than 400 boutiques); the achievement of reducing the carbon footprint of a cup of Nespresso by 20% in 2013; the introduction of various coffee ‘Grand Crus’ over the years. The articles includes a list of all the ‘Nespresso’ Grand Crus (50) and a graphic showing the history of the ‘Nespresso’ coffee machines (more than 20).

Enclosure 5: Screenshots of the website https://www.nestle-nespresso.com presenting facts and figures mentioning inter alia that the Nespresso Facebook page has 6.5 million fans and that the online boutique is visited by 444 000 unique customers every day, that there were over 700 boutiques at the end of 2017 versus 1 boutique in 2000.

Enclosure 6: A 101-page long list of registered rights protecting ‘NESPRESSO’ trade marks.

Enclosure 7: A corporate communication of Nestlé Nespresso SA dated May 2016 which describes Nespresso as the pioneer of the portioned coffee segment, the most dynamic and fastest growing segment of the global coffee market. The article states that Nespresso is strongly positioned in the segment and that the success of the brand is based on the quality of the coffees and a unique service-offering to further engage coffee lovers who demand authentic quality and moments of pleasure. It mentions the existence of a Members’ Club, the launch of an innovative retail solution including the ‘Nespresso Cube’ which is the first fully automated Nespresso boutique, and lists the types of ‘Grand Crus’.

Enclosure 8: Screenshots of the website www.nespresso.com/de/en/home intended to show the wide variety of the ‘NESPRESSO’ products, printed in July 2019 showing coffee machines and coffee capsules, including the online sales page from which a very broad variety of different capsules and machines can be ordered, as well as accessories and miscellaneous products (biscuits, sugar, recycling bin, dispensers, coffee cups, coffee glasses, descaling kits, etc). The sign is displayed at the top of all pages.

Enclosure 9: Annual report published by BrandFinance in July 2019 (Report on the most valuable and strongest Swiss brands). It mentions that ‘Nespresso’ is at position 38.

Enclosure 10: Press article published on Bloomberg’s website at www.bloomberg.com in July 2019 entitled ‘Nestlé Gains as Starbuck Coffee Capsules Help Sales Accelerate’. The subtitles read ‘Nespresso maker forecasts reaching 2020 margin target early’. The article clarifies that the Swiss company has been selling Starbucks-branded capsules for Nespresso machines.

Enclosure 11: Brochures related to the ‘NESPRESSO’ brand displayed mostly as or (in German, Spanish, Italian, French and English). They are ‘sample brochures’ as can be gathered from the cutout marks and the cartridges in the lower part of the pages referring to the customer (nespresso),indicating the dimensions, the colour and dates (in 2018). The date of 2019 is mentioned in the text of some of the brochures. Some include a list of boutiques in Germany (approximately 30), in Spain (more than 60). They show coffee machines and a broad range of coffee capsules as well as accessories.

Enclosure 12: Screenshots of the timeline of the ‘NESPRESSO’ Facebook page at www.facebook.com/nespresso printed in July 2019. It can be seen that the page has more than 7 million followers and is ‘liked’ by more than 7 million people as well.

Enclosure 13: Screenshots of the timeline of ‘NESPRESSO’ Instagram account at www.instagram.com/nespresso (printed in July 2019) showing that the page has 497 000 followers featuring a lot of advertising posts including captures of video with George Clooney.

Enclosure 14: Screenshots of the timeline of ‘NESPRESSO’ Twitter account at https://twitter.com/Nespresso (93 000 followers), printed in July 2019. The posts refer to the advertising campaigns with George Clooney (one in 2018, another in 2016), to Nespresso’s sponsoring of the America’s Cup (posts dated June 2017), to the 2018 BAFTA Nespresso Nominee’s party, to the 2018 Nespresso Talent competition (third edition of the vertical short-film contest at the Cannes Festival), to the 2015 Atelier Nespresso in Lyon, France.

Enclosure 15: Overview of the video ads published on ‘NESPRESSO’ YouTube channel at www.youtube.com/user/nespresso such as the video entitled ‘The Quest’ with George Clooney dated October 2018. The page shows other videos such as educational videos about coffee, Nespresso coffee recipes, video of assistance for the use/maintenance of coffee machines, the sustainability of the brand. A section entitled ‘Nespresso & Films’ refers to various events including Cannes Film Festival editions of 2016 and 2017. The section entitled ‘Nespresso in Action!’ refers to sports sponsorship (Americas’ Cup in 2017, the Ryder Cup in 2014). The channel has more than 420 000 subscribers.

Enclosure 16: Documents issued by an advertising agency giving an overview of the numerous advertising campaigns created for the ‘NESPRESSO’ products, referring to campaigns in 2018 and 2017.

Enclosure 17: Press article published on the website www.prolificlondon.co.uk in April 2019 titled ‘JWT’s Nespresso campaign turns consumers into home baristas’. It indicates that the campaign for the brand’s Barista creations (coffee with milk) will run in over 90 markets worldwide and span digital, social media, print, CRM and TV. It includes the following quote from Nespresso: ‘Nespresso has long been known as a premium-provider of home espressos, and now, we’re responding to the changing coffee-drinking climate with the launch of these specially crafted blends for mill-coffee lovers’. Another quote from the advertising agency reads that ‘the tone captures both the spirit of Nespresso’s commitment to coffee excellent and the creative nature of the new Barista Creations range’.

Enclosure 18: Communication from Nespresso concerning its participation to the event ‘Bocuse d’Or 2015’, a biennial world chef championship hosted in Lyon, France and, in parallel, its participation to the Atelier Nespresso al Lyon. The title is ‘Nespresso shares its coffee expertise at Bocuse d’Or 2015’. It is indicated that Nespresso had installed 120 coffee machines on the site and that it was to serve more than 80 000 grand crus during the event. The article refers to a seven-day showcasing run in parallel to the ‘Bocuse d’Or’ event in the centre of Lyon namely ‘L’Atelier Nespresso’ and the ‘Nespresso Chef Academy’. It is explained that the Atelier Nespresso is open to Nespresso club members and end-consumer competition ticket winners, international VIP guests and select media and bloggers, with surprise participants such as Michelin starred chefs. The Nespresso Chef Academy brings together 10 leading international chefs and is part of the Nespresso Coffee expertise program which aims to share its knowledge through the entire coffee value chain. Extracts from the Nespresso presskit at https://www.nespresso.com show fixed images of videos of the Atelier in 2015 and 2019 (January).

Enclosure 19: Extracts from websites htpps://www.nespresso.com and blogdecannes.fr (in English) regarding Nespresso participation as official partner to the Cannes Film Festivals of 2017 and 2019. Several formats of participation are mentioned: ‘les Entractes Nespresso’ described as dinner events taking place on the ‘Nespresso beach’ and the ‘Nespresso Talent Competition award’ described as a short-film competition in vertical format honouring amateur directors from around the world, since 2016.

Enclosure 20: Press articles published in EU countries (the UK, Spain, Italy, Germany, France) dated between 2016 and 2019. Many are in languages other than the language of the proceedings (which is English) However, the opponent is not under any obligation to translate the evidence filed with a view to show the reputation of the earlier mark, unless it is specifically requested to do so by the Office (Article 7(4) EUTMDR in conjunction with Article 24 EUTMIR). In this regard, the Opposition Division decided not to request a translation because, on the one hand, the enclosure includes several articles in English which are particularly telling in terms of reputation and, on the other hand, the provision of a translation, which may be costly and which may delay the proceedings, would have no bearing on the outcome of this decision. Therefore the articles which are not in English are only relevant to the extent that it is clear that they mention the trade mark or in some cases, where they are self-explanatory. Some of the articles are listed below:

• article dated July 2016 on http://expreso.info/noticias/bazar, in Spanish, which refers to the ‘Envivo Lungo, a Grand Cru of Nespresso’; (in this case the title was translated by the opponent in its observations);

• article on 24ore, dated May 2017, in Italian, entitled ‘Il caso/Nespresso - Capsule del caffè, operazione riciclo’;

• article dated 2017 from the Financial times entitled ‘Nespresso looks to raise tempo on coffee pod recycling’ mentioning that Hollywood star George Clooney is the public face of Nespresso;

• several articles in English referring to NESPRESSO’s participation to the 2017 BAFTA Nominees Party:

  • article from ‘Little Black Book’ at lbbonline.com, in English, entitled ‘BAFTA announces Nespresso as Nominee’s Party Co-Host’. It reads that: storytelling is part of the Nespresso brand DNA and there is no greater medium for this than film; Nespresso has supported film festivals that recognise outstanding creativity and talent for many years notably the Cannes film festival and the Berlinale and now Nespresso is looking forward to celebrating success and exceptional talent with BAFTA.

  • articles dated February 2017 in the UK press: ‘the Sun’ (‘Leading ladies Emma Stone and Amy Adams lead the glamorous arrivals at the BAFTA Nespresso Nominees’ party at Kensington palace’), ‘Daily Mirror’ (‘A host of celebrities turned out for the Nespresso Nominees party held at Kensington Palace’), ‘the Telegraph’ (‘Anya Taylor Joy arrives at the EE British Academy Film Festival Awards Nespresso Nominee’s Party’), ‘Hello’, ‘Cosmopolitan’, ‘Elle’, etc., and blogs with the indication of the numbers of followers ranging from several tens thousands to more than 1 million.

• Article dated October 2018 in the Evening Standard (https://www.standard.co.uk) referring to the new medieval themed Nespresso advert with George Clooney and Games of Throne star Natalie Dormer. The same news is reported in ‘Metro’ (https://metro.co.uk).

Assessment of the evidence

The Court has defined the nature of reputation by reference to the knowledge of the earlier trade mark among the public and has explained that it ‘is only where there is a sufficient degree of knowledge of that mark that the public, when confronted by the later trade mark, may possibly make an association between the two trade marks and that the earlier mark may consequently be damaged’ (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 23). In view of these considerations, the Court has concluded that reputation is a knowledge threshold requirement, implying that it must be principally assessed on the basis of quantitative criteria. In order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned by the goods or services covered by that trade mark (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 22-23; 25/05/2005, T-67/04, Spa-Finders, EU:T:2005:179, § 34)

It is clear from the evidence that the earlier trade mark had been subject to long-standing and intensive use (i.e. since 1986), for coffee machines and coffee capsules, at the date of the filing of the contested trade mark in February 2019. The extracts from the opponent’s website reveal a strategy based on continuous innovation and intense advertising/sponsorship based on collaboration with a very famous actor (George Clooney) and the participation in key events (Bocuse d’Or and Cannes Festival in France in 2016, 2017, 2019, 2017 BAFTA in England and an article mentions the Berlinale in Germany). The type of events is subject to wide media coverage as can be seen from the press articles and blog submitted. In this case, they took place shortly before the filing date of the contested trade mark which strongly supports the existence of reputation on that date. In general, the closer to the relevant date the evidence is, the easier it will be to assume that the earlier mark had acquired reputation at that time. Furthermore, the longevity of the advertising saga with the famous actor George Clooney is another strong indication of knowledge of the trade mark among the relevant public for similar reasons namely the celebrity of the actor resulting in a strong impact of the campaign on the public and an intense media coverage. Importantly, the evidence indicates that the first advertisement of the saga took place in the EU before being exported to the US, and refers to the launch of a new advert in October 2018, also featuring an actress from the very popular series ‘Game of Thrones’.

This strategy has led to the regular launch of new models of machines and new capsules of coffee blends (called ‘Grand Crus’) which are offered to customers online and in physical shops. The evidence shows that there are several hundreds of Nespresso boutiques in the world, out of which many are located in several countries of the European Union including on the famous and very busy Champs Elysées of Paris (and that the physical boutique was also opened in Paris in 2000). The evidence also reflects that the opponent’s strategy focuses on its customers as shown by the existence of a Members’ Club and of a loyalty scheme, and is concerned with environmental issues which is a theme which has led to its being mentioned in several articles.

Notwithstanding the absence of figures of sales or market share, the indications regarding the duration and geographical extent of use, taken in combination with the documents proving an intense and impacting promotional activity on the part of the opponent, allow safe inference that the earlier mark enjoys high awareness among a significant part of the public in the European Union, at least in the United Kingdom and in France.

Note is taken that many documents originate from the opponent itself such as printouts of its website, communications issued by itself, or ‘sample brochures’ with no proof of their actual distribution. Documents issued by the interested party have reduced probative value. Nevertheless, in this case, at least the information from the website is publicly available and to that extent is considered reliable. Furthermore, the information available from these documents is convincingly corroborated by other documents such as the press articles, the Brandfinance report which situates the trade mark Nespresso among the leading Swiss brands and the activity on the Nespresso social media pages.

Furthermore, it is true that some documents are dated after the filing of the contested sign. Evidence of reputation with regard to a later point in time than the relevant date might nevertheless allow conclusions to be drawn as to the earlier mark’s reputation at the relevant date (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 31; 17/04/2008, C-108/07 P, Ferro, EU:C:2008:234, § 53; 15/12/2005, T-262/04, Briquet à Pierre, EU:T:2005:463, § 82). This is the case as regards the press article on www.prolificlondon.co.uk of Enclosure 17 dated April 2019 insofar as it states that ‘Nespresso has long been known as a premium-provider of home espressos’.

It follows from the above that the evidence proves that the earlier mark enjoyed a well-established reputation on the relevant date, at least in the United Kingdom and in France. The Court has clarified that, for an earlier European Union trade mark, reputation throughout the territory of a single Member State may suffice 06/10/2009, C-301/07, Pago, EU:C:2009:611, paras 29-30). Therefore, the opponent has proved reputation in the European Union.

The evidence however does not succeed in establishing reputation of the trade mark in connection with all the goods and services for which it is claimed: the evidence only concerns coffee capsules (for which the earlier mark is registered as these goods fall under the term coffee in Class 30) and for (electric) coffee machines, in Class 11, whereas reference to the remaining goods is either scarce or non-existent.

2. The signs

NESPRESSO
Earlier trade mark	Contested sign

 

The relevant territory is the European Union.

As the claim of reputation has been considered successful based on the knowledge of the earlier trade mark among the French and the English-speaking public, the analysis below focuses on that public.

It can immediately be gathered from the depictions of the signs above that the contested mark includes the verbal element ‘Nescpresso’ which differs in only one letter from the earlier mark ‘NESPRESSO’.

Whether the signs are similar and that being the case, to what degree, not only depends on their sharing elements but also on the distinctiveness and dominant character of their coinciding and differing elements. Therefore, in the comparison of signs, the visual, phonetic and conceptual similarity must be assessed by weighing up the coinciding and the differing elements, namely by taking into consideration their distinctiveness and dominance and whether and to what degree these elements coin the overall impression produced by the marks. All these considerations will lead to a conclusion on the degree of similarity in each aspect (visual, phonetic and conceptual), bearing in mind on the one hand that the similarity of the signs is a sine qua non for the applicability of Article 8(5) EUTMR and, on the other hand, that the degree of similarity is one of the factors to be taken into account in assessing, in the next section of the decision whether the public will establish a link between the signs.

The term ‘NESPRESSO’ of which the earlier mark consists is meaningless as a whole but in relation to the goods at issue (coffee capsules and coffee machines), is highly likely to be perceived by the public under analysis as including the word ‘ESPRESSO’ of Italian origin which is used as such in English and as ‘express’, ‘expresso’, or also as such, in French. The word is used to qualify a coffee obtained by forcing a small amount of boiling water under pressure through finely-ground coffee beans. The coffee thus obtained is thicker than coffee obtained with other methods and has a high concentration of flavours. The term ‘ESPRESSO’ itself is descriptive in relation to the goods at issue as it indicates their nature (coffee) or purpose (coffee-making machines). Nevertheless, as claimed by the opponent, the term ‘NESPRESSO’ is an invented word and the addition of the letter ‘N’ at the beginning, before the sequence ‘ESPRESSO’, where it is immediately perceptible, suffices to confer some distinctiveness on the term as a whole. The word is thus considered distinctive to a below average degree. This is consistent with the perception of the Boards of Appeal which established that the word ‘NESPRESSO’ clearly contained a non-distinctive term (the word ‘ESPRESSO’) but that its combination with an ‘N’, placed at the beginning, produced a sign which, as a whole, was able to perform a trade mark function because it was easily pronounced and remembered (18/10/2012 – R 1603/2011-1 – ZESPRESSO CAFÉ (FIG. MARK) / NESPRESSO, § 27).

The figurative contested mark includes a figurative verbal element consisting of kind of curved line and below it, verbal elements depicted in handwriting style, arranged on three lines. The parties argue intensely about the perception of each of the elements of the contested sign by the public and their resulting impact on that public, with respect to each other.

One of these elements is the term ‘Nescpresso’, placed on the second line. The opponent claims that it is a meaningless and distinctive word as it does for the word ‘Nespresso’ forming its own mark. It considers that the word ‘Nescpresso’ is bigger than the other verbal elements of the contested sign and is therefore, visually dominant. It mentions that its importance is emphasized by the fact that it is underlined. The applicant puts forward that ‘Nescpresso’ is the acronym of the words of the expression placed below ‘Neapolitan school espresso’ which refers to the famous espresso coffee of the Italian town of Naples and, therefore, that the word is ancillary to the expression. It denies that the word ‘Nescpresso’ is the dominant element and submits a graphic in which it has framed the elements into rectangles, in which the bigger rectangle includes the verbal element ‘cafféignorante’ placed on the first line and the figurative element placed at the top whereas the rectangle which includes the term ‘Nescpresso’ is smaller. The opponent counter-argues that an acronym should be formed by the initial letters of the expression and the applicant rebuts this by saying that this is not necessarily the case. The opponent also indicates that the figurative element and the term ‘cafféignorante’ should not be considered as a whole when assessing the dominant character of the contested sign’s elements.

The Opposition Division disagrees with both parties. It is true that ‘Nescpresso’ is an invented term as claimed by the opponent but there is a high probability that this public will also associate this term with the specific type of coffee previously described (the ‘espresso’ coffee). The reasons set out for such perception in relation to the term ‘NESPRESSO’ constituting the earlier mark are equally valid. The letter ‘c’ between the letters ‘s’ and ‘p’ does not immediately draw the attention because of its intermediate position and the natural tendency of the public is to look for existing words in trade marks. Additionally, from the phonetic point of view, for the French-speaking public, the sound of the letter combination ‘esc’ (/esk/) is very similar to the sound of the letter combination ‘ex’ (/eks/) in the ‘expresso’ variant of the original Italian word. There is no doubt regarding such perception in relation to the contested coffee (Class 30) and bar services (Class 43), as coffees are commonly served in bars. As regards the contested clothing, this will also be the case in the particular context of the sign, namely the term ‘caffe (which will be understood as coffee or café) placed just above ‘Nescpresso’ and the term ‘espresso’ placed just below it.

The applicant argues that the word ‘Nescpresso’ will be perceived as the acronym of the expression placed below (‘neapolitan school espresso’) but the claim is not convincing. Even with the two terms placed on top of each other, the relationship between them is not obvious because the term ‘Nescpresso’ is depicted in title case whereas acronyms are usually depicted in upper case. Furthermore, an acronym is indeed in most cases, as claimed by the opponent, formed by the initial letters of the words of the expression which is not the case here. Therefore, for the Opposition Division, the term ‘Nescpresso’ of the contested sign, which includes a reference to the espresso coffee, is distinctive to a below average degree for the coffee-related goods and services in Classes 30 and 43 but to a normal degree for clothing in Class 25. As regards the visual impact of the term, the Opposition Division finds that it is only slightly bigger than the word ‘caffegnorante’ placed above and that both of these elements, together with the figurative element are to be considered as the co-dominant elements as compared with the much smaller expression ‘neapolitan school espresso’. On the other hand, it cannot be denied that the underline and the initial upper case ‘N’ of the element ‘Nescpresso’ (whereas all of the other verbal elements start with a lower case letter) make the term more noticeable.

As regards the verbal expression ‘neapolitan espresso school’, the English-speaking public will no doubt perceive it as referring to an educational establishment which imparts courses related with the espresso from the town of Naples. This perception is also likely on the part of the French public as the English word ‘school’ can be considered a basic term of the English language and as the term ‘neapolitan’ is close to the French term ‘napolitain’ (meaning ‘from Naples’). In addition, the adjacent term ‘espresso’ propitiates this perception because Italy in general and Naples in particular are famous for the espresso coffee. Therefore, the conclusions can be drawn that the verbal expression is very weak for coffee and bar services as it indicates that the espresso coffee/coffee served in the bar is elaborated according to the rules of the Neapolitan, but is distinctive to a normal degree for the goods in Class 25. As previously mentioned the expression has reduced visual impact.

The parties agree that the term ‘caffeignorante’ will be perceived by the public at issue as the conjunction of the terms ‘caffe’ and ‘ignorante’, a position also shared by the Opposition Division: the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). The sequence of letters ‘ignorante’ is in fact very close to the French and English words ‘ignorant’ (and is even the feminine form of the word in French) which indicates a person not having or showing much knowledge or information about things; not educated’. The sequence ‘caffe’, immediately brings to mind the word ‘café’ (which means ‘coffee’ in French and refers to an establishment where coffee is served in English).

Despite this initial common understanding, the parties argue about the message conveyed by the combination. The core issue of their disagreement is not particularly relevant for the analysis but will be briefly summarized here considering the energy and efforts employed by both sides: the opponent considers that the expression means that the goods and services are intended for persons not knowledgeable about coffee: The applicant protests that the term is used in reference to the expression ‘caffé leterrario’ (literary coffee, a culture of coffee known among intellectuals and well-educated persons) because the term ‘ignorant’ is to be perceived as an oxymoron in the sense that it refers to the concept of ‘Socratic’ ignorance (I know that I know nothing) which is in fact wisdom. The applicant indicates that this is clear from its webpage which features a depiction of the said Greek philosopher. It explains that this idea is at the core of its brand, whose message is to inspire and impart the knowledge of the espresso of the Italian city of Naples. It adds that the idea is further conveyed by the words underneath namely ‘Nescpresso’ and ‘Neapolitan school espresso’. Obviously, the Opposition Division cannot agree with such an explanation which is not likely to reflect the perception of the average consumers of the goods and services at issue irrespective of the applicant’s intentions and of the content of its webpage which is irrelevant in the assessment.

In any case, be that as it may, the relevant point here is that the term ‘caffeignorante’ is related to coffee, a point of agreement between the parties, and that this will be perceived by the French-speaking and the English-speaking public. Accordingly, this public will see a certain link between the term and the contested coffee and bar services (for which the term is therefore, weak) whereas this meaning is not related to the contested clothing in relation to which the term is, consequently, fully distinctive. As previously mentioned, this element is one of the co-dominant elements of the signs.

Concerning the figurative element, the Opposition Division considers that there is no reason to depart from the usual principle that 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). The figurative element of the contested mark is quite large but is nevertheless a basic curved line which is not likely to cause a lasting impression on the public. The applicant argues that it is a stylized depiction of the letters ‘ci’ of ‘caffeignorante’, a perception which is not likely as the element does not contain the letters ‘ci’ at all (be it in standard depiction or as depicted in the sign).

The above analysis leads to the following conclusions as regards the (degree of) similarity of the signs.

 

Visually, the earlier mark ‘NESPRESSO’ and the element ‘nescpresso’ of the contested sign differ in only an intermediate letter ‘c’ whereas they share nine letters in total namely their first three letters and their last six letters. These elements are distinctive to a below average degree respectively for the earlier mark’s relevant goods and for the contested sign’s goods and services in Classes 30 and 43. The distinctiveness of ‘nescpresso’ is normal for the contested clothing in Class 25.

The signs differ in all of the additional elements of the contested sign. The verbal element on the third line has clearly very reduced visual impact and the figurative element will not be given much importance by the public either. The remaining verbal elements of the contested sign do not have more visual impact than the similar term ‘Nescpresso’, which is immediately visible despite the fact that it is placed on the second line. The underline contributes to this.

These differing elements are not more distinctive than the similar element for any of the goods and services at issue.

Based on the above, the signs are visually similar to a below average degree.

Aurally, it is likely that the expression ‘neapolitan school espresso’ of the earlier mark will not be pronounced considering its clearly reduced visual impact in comparison with the other verbal elements. Consumers generally only refer to the dominant elements in trade marks (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and in any case, they tend to shorten marks containing several words. The figurative element, which will be perceived as a curved line, is not subject to pronunciation.

Therefore, the signs differ in the sound of the element ‘Caffeignorante’ of the contested mark which will be pronounced first and is a long element. As such, it will catch the consumers’ attention first. Nevertheless, the terms ‘NESPRESSO’ and ‘Nescpresso’ of the signs are highly similar aurally as they differ only in the sound /k/ of the intermediate, additional letter ‘C’ whereas they coincide in the sounds of ‘NES’ and ‘PRESSO’. The difference between these terms is barely audible. Finally, the considerations regarding the distinctiveness of the elements of the signs, with respect to the relevant goods, are the same as in the assessment of the visual similarity.

The above leads to the conclusion that the signs are aurally similar to a below average degree.

Conceptually, the earlier mark evokes an espresso coffee and this is also the case of the contested sign for all of the goods and services at issue for the reasons previously mentioned. The concept itself is generic for the coffee-related goods and services and is not capable of triggering a conceptual link in the mind of the public when they encounter the trade marks on these goods. In contrast, the public will notice at least the concept of the term ‘ignorant’ of the contested sign which leads to the conclusion that the signs are not conceptually similar in relation to coffee goods and services. Furthermore there is at least an average degree of conceptual similarity in relation to clothing due to the coinciding reference to an espresso.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed for coffee capsules and for coffee machines and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

 

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

 

• the degree of similarity between the signs;

 

• the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 

• the strength of the earlier mark’s reputation;

 

• the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 

• the existence of likelihood of confusion on the part of the public.

 

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

Furthermore, the Court has established that, if the public for the goods or services for which the earlier mark is reputed is completely distinct from the public for the contested goods, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

It is useful at this stage to recall that the contested goods and services are the following:

Class 25: Clothing.

Class 30: Coffee.

Class 43: Bar services.

In this case, the below average degree of visual and aural similarity of the signs (and conceptual similarity for the goods in Class 25) and the well-established reputation of the earlier mark suffice to establish that the contested sign will bring to the public’s mind the image of the earlier mark reputed for coffee machines and coffee capsules not only in relation to the contested coffee-related goods and services but also, considering the clear overlap in the public, in relation to clothing.

Therefore, taking into account and weighing up all the relevant factors of the present case, it must be concluded that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 

• it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 

• it is detrimental to the repute of the earlier mark;

 

• it is detrimental to the distinctive character of the earlier mark.

 

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

 

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and repute of the earlier trade mark.

Unfair advantage (free-riding)

 

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

 

The opponent bases its claim on the following:

 

• it is clear that the marketing of the goods and services of the contested EUTMA will be facilitated by the association of the relevant consumer with the reputed mark ‘NESPRESSO’;

• taking unfair advantage of the reputation of an earlier mark does not necessarily imply a deliberate intention;

• the investments and the reputation built over decades of production and marketing of the well-known NESPRESSO products will make it easier for the applicant to market its goods and services;

• Therefore, there is a high risk that the contested sign, intentionally or unintentionally, will benefit from the strong reputation of the earlier mark.

Furthermore, when addressing the issue of the nature of the goods and services in its observations in support of the claim under Article 8(5) EUTMR, the opponent argues that it is a common phenomenon that well-known brands are depicted on clothing items such as T-shirts or aprons. In this respect, the evidence includes photographs of chefs wearing T-shirts on which the term ‘Nespresso’ is visible (on the occasion of the ‘Nespresso Atelier’ in Lyon) and the observations include photographs of waiters wearing T-shirts on which trade marks related to the restaurant sector are displayed.

The opponent’s arguments are straightforward and are consistent with the nature of the evidence, from which it is clear that the reputation has been built based on significant investments in the promotion and marketing of the earlier mark which makes plausible the risk that the applicant may benefit from those investments without itself engaging expenses. The likelihood of an unfair advantage is obvious in relation to the contested coffee-related goods and services in Classes 30 and 43 to which the positive qualities on which the reputation of the earlier mark is built (innovation, etc.) can easily be transferred. Furthermore, it is true that the sector of clothing constitutes a natural extension for trade marks of almost any market sector, in particular for reputed trade marks.

In view of the above, there is a high probability that the use of the mark applied for, for the goods and services mentioned above, may lead to free-riding, that is to say, it would take unfair advantage of the established reputation of the earlier trade mark and the investments undertaken by the opponent to achieve that reputation. The trade mark applied for could be more attractive for consumers, due to the reputation of the earlier mark and, therefore, could facilitate the marketing of the contested goods and services, so that the applicant might unfairly benefit from the reputation of the earlier mark. In this way, the contested sign would receive an unfair ‘boost’ as a result of its being linked with the opponent’s mark in the minds of consumers.

On the basis of the above, it is concluded that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

 

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

 

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods and services.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the opposition in relation to Article 8(1)(b) EUTMR.

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(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

 

 

Boyana NAYDENOVA

Catherine MEDINA

Kieran HENEGHAN

 

 

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.