OPPOSITION No B 3 087 024

Enco Vending OOD, 4, Cherno more Str., 1186 Sofia, Bulgaria (opponent), represented by Yordan Politov, g.k. Mladost 4, P.O. Box 9, 1715 Sofia, Bulgaria (professional representative)

a g a i n s t

New Coffee Ventures AB, c/o Ask Outsourcing Group, Lilla Varvsgatan 14, 211 15 Malmö, Sweden (applicant), represented by Awa Sweden AB, Matrosgatan 1, 211 18 Malmö, Sweden (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 024 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 034 209 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 18 034 209 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 15 078 603 for the word mark ‘Baristo’ (earlier mark 1) and European Union trade mark registration No 12 784 591 for the word mark ‘Baristo University’ (earlier mark 2). 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 15 078 603 (earlier mark 1) and No 12 784 591 (earlier mark 2).

1. The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Earlier mark 1

Class 11: Electric coffeepots; Electrical coffee pots incorporating percolators; Electric coffee makers for household use; Electric espresso machines; Electric water heaters for preparing beverages; Electric coffee roasters.

Class 30: Coffee flavorings [flavourings]; Flavoured coffee; Aromatic teas [other than for medicinal use]; Herbal preparations for making beverages; Herbal infusions; Herbal teas, other than for medicinal use; Aerated beverages with a coffee, cocoa or chocolate base; Prepared coffee beverages; Coffee pods; Prepared coffee and coffee-based beverages; Sage tea; Decaffeinated coffee; Coffee extracts; Coffee extracts for use as coffee substitutes; Coffee extracts for use as flavours in beverages; Coffee extracts for use as flavours in foodstuffs; Tea essences; Espresso; Artificial coffee; Tea substitutes; Instant tea; Cappuccino; Coffee; Coffee (Unroasted -); Coffee [roasted, powdered, granulated, or in drinks]; Coffee in whole-bean form; Coffee capsules; Chocolate coffee; Coffee essences; Kombucha; Coffee concentrates; Citron tea; Malt coffee; Malt coffee extracts; Mate [tea]; Ground coffee beans; Coffee-based beverage containing milk; Coffee-based beverages containing ice cream (affogato); Coffee beverages with milk; Coffee-based beverages.

Class 43: Canteens; Providing of food and drink via a mobile truck; Providing food and drink in bistros; Providing food and drink in Internet cafes; Providing food and drink in restaurants and bars; Providing food and drink for guests; Restaurant services provided by hotels; Self-service restaurants; Restaurants; Providing drink services; Hotel restaurant services.

Earlier mark 2

Class 41: Provision of tuition; Providing of training; Arranging of conferences; Arrangement of conferences for educational purposes; Conferences, exhibitions and seminars; Arranging of contests.

Class 43: Cafeterias; Bar services; Bar services; Cafeterias; Restaurant services.

The contested goods and services are the following:

Class 11: Electric coffee machines.

Class 30: Coffee; artificial coffee; coffee beverage flavourings; coffee-based beverages.

Class 40: Coffee roasting and processing; coffee-grinding.

Class 41: Arranging of coffee courses; education services relating to knowledge about coffee.

Class 43: Services for providing food and drink.

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 11

The contested electric coffee machines include, as a broader category, among others, the opponent’s electric coffee makers for household use or electric espresso machines (contained in earlier mark 1). Therefore, they are identical.

Contested goods in Class 30

Coffee; artificial coffee and coffee-based beverages are identically contained in the list of goods of earlier mark 1 and in the list of the opposed goods.

The contested coffee beverage flavourings are included in the broader category of the opponent’s coffee flavorings [flavourings] (covered by earlier mark 1). Therefore, they are identical.

Contested services in Class 40

The contested coffee-roasting and processing is the process of transforming the chemical and physical properties of green coffee beans into roasted coffee products. The vast majority of coffee is roasted commercially on a large scale, but small-scale commercial roasting has grown significantly with the trend toward ‘single-origin’ coffees served at specialty coffee-shops. These coffee-shops do not only sell raw coffee for take away, but also prepare coffee drinks that can be consumed on site or for take away. Therefore, the contested coffee-roasting and processing is similar to at least a low degree to the opponent´s cafeterias; bar services in Class 43 (covered by earlier mark 2). These services coincide at least in their relevant public, distribution channels and providers.

A similar reasoning applies to the contested coffee-grinding. Coffee bars that sell whole bean coffee for take away also offer coffee-grinding as complementary service. Therefore, the contested coffee-grinding is similar to at least a low degree to the opponent´s cafeterias; bar services in Class 43 (covered by the earlier mark 2). These services coincide at least in their relevant public, distribution channels and providers. In addition, they are also complementary.

Contested services in Class 41

The contested arranging of coffee courses and education services relating to knowledge about coffee are included in the broader category of the opponent’s providing of training (covered by earlier mark 2). Therefore, they are identical.

Contested services in Class 43

The contested services for providing food and drink include, as a broader category, the opponent’s providing of food and drink via a mobile truck; (covered by earlier mark 1). Therefore, they are identical.

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 and services found to be identical or similar are directed at the public at large and professionals engaged in the coffee industry.

The degree of attention may vary from average to high.

3. The signs

Earlier mark 1

Baristo Earlier mark 2 Baristo University
Earlier trade marks	Contested sign

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

As the opponent correctly states, the verbal element of the contested sign ‘BARISTA’ is meaningful in certain territories, for example in those countries where English, Italian, Spanish or French is understood. A ‘barista’ is ‘a person who makes and serves coffee in a coffee bar’ (information extracted from Collins Dictionary on 27/03/2020 at https://www.collinsdictionary.com/dictionary/english/barista). It cannot be excluded that the word is also known to some consumers from countries where these languages are not spoken. However, the vast majority of the public in those countries are not familiar with the word. The same line of reasoning has been applied by the Boards of Appeal stating that ‘the term ‘BARISTA’ does not belong to the internationally-known Italian vocabulary in the field of food and drink, such as ‘espresso’, ‘capuccino’, ‘mozzarella’ etc.’ (13/02/2015, R 1019/2014-5, BARISTA PRIMA COFFEEHOUSE (fig. mark), § 41).

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the non-English, -Italian, -Spanish or French-speaking public in the European Union to whom this word is meaningless. For this part of the public ‘BARISTA’ is distinctive.

The word ‘coffee’ below this element will be understood by the relevant public since it is a basic English word that is internationally known. Considering the goods and services in question, this word is clearly non-distinctive as it describes their subject. The abbreviation ‘c/o’ is an English abbreviation and it is not likely to be understood by the public referred to above. In any event, understood or nor not, these words will have very little impact on the consumer´s overall perception of the sign due to their smaller size and subordinate position.

A similar conclusion can be drawn about the elements depicted on top of the verbal element ‘BARISTA’. Due to their even smaller size, they will hardly be noticed by the relevant consumer, who will most likely perceive the number ‘2006’ as the year when the company was established and will not attach any commercial origin to it. As regards the figurative device, it is of purely decorative character. The bold lines below and above the verbal element ‘BARISTA’ are banal non-distinctive stylisations that will barely be drawn attention to by consumers. To this extent, and moreover taking into account the smaller size of the rest of the verbal elements, as explained above, the verbal element ‘BARISTA’ will carry most weight in the consumer´s overall perception of the contested sign.

The verbal element ‘Baristo’ constituting earlier mark 1 and the first element of earlier mark 2 is meaningless and it is therefore distinctive. The second element of trade mark 2 ‘University’ is an English word that, if not directly understood, will be at least guessed by the vast majority of the relevant public due to its closeness to the equivalents in the corresponding languages. It is weak in relation to the services in Class 41 as it alludes to the place where they can be provided.

Earlier mark 2 is a verbal mark and as such cannot have dominant elements. However, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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. Therefore, it is expected that more attention will be paid to the first verbal element ‘Baristo’.

Visually, the signs coincide in the identical string of letters ‘BARIST-’, 6 out of 7 letters of the sole verbal element in earlier mark 1, of the first verbal element of earlier mark 2 and of the most prominent one of the contested sign. They differ in the last letter of that verbal element, ‘o’ in the earlier marks and ‘A’ in the contested sign. They further differ in the remaining verbal elements of the contested sign, the figurative element and in its stylisation.

Considering the distinctiveness and impact of each element addressed above, the Opposition Division finds the signs visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘B-A-R-I-S-T’, present identically at the beginning of the sole and distinctive element of earlier mark 1, in the first element of earlier mark 2 and in the most influential one of the contested sign. The pronunciation differs in the ending of these elements, ‘o’ in the earlier marks and ‘a’ in the contested sign. It also differs in the second verbal element of earlier mark 2 and in the rest of the verbal elements of the contested sign which, given their smaller size and the non-distinctive character of some of them, will most probably not be pronounced by the relevant public, also because consumers tend to abbreviate in case of longer verbal elements in marks. Therefore, the aural similarity between earlier mark 1 and the contested sign is high as result of their different last letters, ‘o’ versus ‘a’ only. For earlier mark 2, the aural similarity is average.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The coinciding distinctive element ‘BARIST-’ will be seen as meaningless for the public taken into account. Due to the different meanings of the rest of the verbal elements in the conflicting signs, the signs are conceptually not 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public referred to. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of a weak element in earlier mark 2 for some of the services, as stated above in section c) of this decision.

1. Global assessment, other arguments and conclusion

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).

In the case at hand the goods are identical and the services are partly identical and partly similar to at least a low degree. They are directed at the public at large and professionals whose degree of attention may vary from average to high.

The distinctiveness of the earlier marks is normal.

As explained in section c) of this decision, the elements with most weight in the signs are almost identical; they only differ in their last letters ‘o’ v ‘A’. Therefore, the signs are considered visually similar to an average degree, while the aural similarity is either high (in relation to earlier mark 1), or average (in relation to earlier mark 2). Conceptually, the signs are not similar. However, the fact that the marks are not conceptually similar should not be overemphasized as this arises from elements which play secondary roles either because of their position and size within the signs, or because of their weak/non-distinctive character. In any case, they have lesser impact on the consumers than the highly similar verbal element ‘Baristo/ BARISTA’ of the signs.

Upon also taking into account 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), the Opposition Division finds that the existing visual and aural similarities between the signs prevail. In addition, the contested sign does not present any particular stylisation, which would be remembered by consumers and would enhance the visual differences between the signs.

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 undertaking or economically linked undertakings.

The Opposition Division is of the opinion that the said similarities between the signs are sufficient to offset even the low degree of similarity between some of the services, in particular due to the fact that the elements with most weight in the signs (‘BARISTO’ and ‘BARISTA’) are almost identical as stated above. Therefore, there is a likelihood of confusion on the part of the public in the European Union for whom the word ‘Barista’ is meaningless. These consumers may overlook the different last letters of the verbal elements ‘BARISTO’ and ‘BARISTA’ and assume that the signs denote goods and services produced by the same undertaking, or economically linked undertakings. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 15 078 603 and No 12 784 591. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the above earlier rights lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Sylvie ALBRECHT

Meglena BENOVA

Mads Bjørn Georg JENSEN

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.