CANCELLATION No 11186 C (INVALIDITY)

Giuliano Caffè S.r.l., Via Vittorio Veneto 140, 10014 Caluso (TO), Italy (applicant), represented by Jaccobacci & Partners S.P.A., Corso Emilia 8, 10152 Torino, Italy (professional representative)

a g a i n s t

Julian Imaz Villar, Paseo de Gracia 2-4, 5ª planta, 08007 Barcelona, Spain (EUTM proprietor), represented by Isern Patentes y Marcas S.L., Avenida Diagonal 463 bis, 2º piso, 08036 Barcelona, Spain (professional representative).

On 13/10/2016, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is partially upheld.

2. European Union trade mark No 12 180 816 is declared invalid for some of the contested goods and services, namely:

Class 29: Milk products.

Class 43: Services for providing food and drink.

3. The European Union trade mark remains registered for all the remaining goods and services, contested or not, namely:

Class 29: Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; Milk; Edible oils and fats.

Class 41: Entertainment; Organisation of musical events and shows; Discotheque; Leisure services.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 12 180 816, namely against some of the goods in Class 29 and all the services in Class 43. The application is based on European Union trade mark registration No 2 102 291. The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that both the marks and the goods are very similar, as they are consumed together by the same public.

The EUTM proprietor argues that the signs are not similar due to their different stylisation, rhythm and pronunciation, and the fact that they will be perceived differently by consumers. The proprietor requested that the applicant submit proof of use of the mark and, when it was provided, disputed the evidence submitted. These arguments will be thoroughly dealt with by the Cancellation Division in the following section.

PROOF OF USE

According to Article 57(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must submit proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier trade mark has been genuinely used in the territories in which it is protected and for the goods or services for which it is registered and which it cites as justification for its application, or that there are proper reasons for non-use. If, at the date on which the contested EUTM application was published, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions contained in Article 42(2) EUTMR were satisfied at that date.

According to the same provision, in the absence of such proof the application for a declaration of invalidity will be rejected.

On 11/11/2015 the applicant was given three months to submit proof of use.

The application for a declaration of invalidity was filed on 15/07/2015. The contested trade mark was published on 15/11/2013. The earlier mark was registered on 18/04/2002. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in the European Union from 15/07/2010 to 14/07/2015 inclusive, as well as from 15/11/2008 to 14/11/2013 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely coffee in Class 30.

According to Rule 40(6) EUTMIR in conjunction with Rule 22(3) EUTMIR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 16/02/2016 the applicant submitted evidence as proof of use.

The evidence filed is the following:

• Exhibit 1: an affidavit signed by Alessandro Minelli, CEO of the proprietor’s company, and dated 11/02/2016, with three appendices.

• Exhibit 2: screenshots of the website of an Italian-style bar and delicatessen shop in Cork, Ireland, and screenshots of the Dutch website www.tiramisu.nl, specialising in premium artisanal coffee.

• Exhibit 3: screenshots taken from the websites of distributors in European countries, namely www.espresssoitaliano.com.pl and www.giulianocaffe.hu.

• Exhibits 4 to 11: invoices issued from 2008 to 2015 to clients in Italy, Slovakia, the United Kingdom, the Netherlands, Belgium, Spain, Poland, Romania, Greece, the Czech Republic, France, Hungary and Ireland.

• Exhibit 12: pictures of packaging.

• Exhibit 13: pictures of coffee-related items.

In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case. That assessment implies a certain interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by high intensity of use or a certain constancy regarding the time of use of that trade mark or vice versa (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 36).

As far as the probative value of the affidavits is concerned, the Office makes a distinction between statements coming from the sphere of the party concerned itself or its employees and statements drawn up by an independent source, following the established case law (09/12/2014, T‑278/12, PROFLEX, EU:T:2014:1045, § 51; 06/11/2014, T‑463/12, MB, EU:T:2014:935, § 54). Statements coming from the sphere of the owner of the earlier mark (drawn up by the interested parties themselves or their employees) are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by personal interests in the matter (11/01/2011, R 0490/2010-4, BOTODERM, § 34; 27/10/2009, B 1 086 240, MAISONS DU MONDE; 31/08/2010, B 1 568 610, THE RACE LEGENDS).

Such a statement cannot in itself sufficiently prove genuine use (09/12/2014, T‑278/12, PROFLEX, EU:T:2014:1045, § 54). However, this does not mean that such statements are totally devoid of all probative value (28/03/2012, T‑214/08, Outburst, EU:T:2012:161, § 30), and the final outcome depends on the overall assessment of the evidence in each individual case. In general, further material is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Therefore, the probative strength of the further material submitted is very important. An assessment should be made of whether or not the content of the affidavit is sufficiently supported by the further material (or vice versa).

In the present case, the affidavit also offers information that is supported by evidence from third parties, as follows:

• Giuliano Caffè was founded in 1950 and its blends have received positive feedback from clients in Italy and all over Europe. Its quality has won several awards. Annex 1 contains a copy of the ‘MAESTRO DEL GUSTO’ (‘Master of Taste’) award for 2012, together with an extract from the website www.maestridelgustotorino.com.

• The turnover for the company was roughly EUR 1.5 million over the last 10 years.

• Giuliano Caffè protected its trade marks in Italy in 1983, and the protection of the marks was extended in 2001 with the filing of the earlier mark in these proceedings. Annex 2 contains a copy of the Italian registrations.

• The company sells not only coffee but also related items, as seen from the catalogue contained in Annex 3.

• The products have been distributed through the hotel/restaurants/café channel rather than directly to end consumers. Promotion of the products has therefore always been very specific and conducted mainly through a network of agents in Italy and various European countries. The yearly marketing and promotion expenses of the company come to approximately GBP 20 000-30 000 over the last 10 years.

• Over the years, Giuliano Caffè has sponsored different sports teams, as seen in Annexes 4 and 5.

Having read the information contained in the affidavit and examined the supporting documents, the Cancellation Division finds that, despite some flaws in the evidence, there is enough proof of the goods having been used during the relevant time frame, in the pertinent place, under the sign as registered and to a sufficient extent. The EUTM proprietor contends that the use is insufficient, as some of the documents have not been translated, some are undated, the extent of use is limited, the indications of the place of use primarily concern a small region in Italy and in some of the evidence the goods have not been identified or are, rather than the relevant goods, merely goods used for merchandising. The EUTM proprietor’s observations follow a piecemeal approach as, when considered as a whole, the evidence is indeed sufficient to prove the use of the contested mark. For example, in relation to the EUTM proprietor’s contention that the applicant did not submit translations of some of the evidence of use and that, therefore, this evidence should not be taken into consideration, it must be remembered that the applicant is under no obligation to translate the proof of use, unless specifically requested to do so by the Office (Rule 22(6) EUTMIR, applicable by analogy to cancellation proceedings). Taking into account the nature of some of the documents and their self-explanatory character, the Cancellation Division considers that there is no need to request a translation.

As regards the time of use, the dated documents (for example, the many invoices submitted as evidence) cover the period from 2008 to 2015, spanning both periods for which use must be proved.

The EUTM proprietor’s contention that the evidence refers to a very small place in Italy may be true in relation to some documents but does not apply to others, for example the invoices, from which it is obvious that the evidence concerns not only Italy but also many other European countries such as Slovakia, the United Kingdom, the Netherlands, Belgium, Spain, Poland, Romania, Greece, the Czech Republic, France, Hungary and Ireland, and the catalogue included in Annex 3, part of which is shown in English, French and German; it is therefore reasonable to assume that this catalogue was distributed in countries other than Italy.

As regards the extent of use and the goods, the proprietor is right in claiming that coffee is a product for mass consumption. It is also true that the invoices and some other documents refer to not only coffee but also other goods so the amounts shown refer not only to the relevant goods but also others, and that coffee is not identified by a code. However, invoices exist for the period, the extent shown is sufficient for the eight relevant years and the goods are identified as coffee in invoices with a sign that is clearly a trade mark, due to the symbol in the top right-hand corner, . The description of ‘coffee’ in the invoices can be cross-referenced with information contained in the other documents, for example the pictures seen in the database of the third party ‘Maestri del Gusto’, which clearly show packages of coffee bearing the mark (Annex 1). All the supporting documents also show that the nature of the mark as used is in accordance with Article 15 EUTMR.

The Court has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Based on the comments made above, the Cancellation Division concludes that the evidence is sufficient to prove that the earlier trade mark was genuinely used in the relevant territory (the European Union) during the relevant period (2008-2015) for the relevant goods (coffee).

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONJUNCTION WITH 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 and services

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.

The goods on which the application is based are the following:

Class 30: Coffee

The contested goods and services are the following:

Class 29: Jams, milk and milk products

Class 43: Services for providing food and drink

Contested goods in Class 29

The contested milk products is a very broad category which includes milk beverages such as kefir and koumiss. These goods and the opponent’s coffee can be distributed through the same channels and have the same origin and end consumers. Therefore, the goods are similar.

On the other hand, the contested jams and milk are dissimilar to the opponent’s coffee, even though these goods are all foodstuffs and can be consumed together by the same consumers, as the goods originate from different companies, are not distributed through the same channels and are not in competition with each other or complementary.

Contested services in Class 43

The contested services for providing food and drink are similar to a low degree to the opponent’s coffee, as they can coincide in their producers and distribution channels and they are, furthermore, complementary.

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 similar (to various degrees) are directed at the public at large, whose degree of attention towards them would be, on the whole, average.

3. The signs

Earlier trade mark	Contested trade mark

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, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Both are figurative marks. The most distinctive element of the earlier mark is the word ‘Giuliano’, as the word ‘caffè’ will be understood by the majority of consumers as ‘coffee’ (the goods that the mark is registered for) and the symbol ® will be perceived as meaning ‘registered mark’. The word ‘Giuliano’ is also the most dominant element of the mark, as the remaining verbal elements are smaller than this word and the figurative elements are merely decorative. On the other hand, the contested mark, consisting of just one word, has no elements that are more distinctive or dominant than other elements.

Visually, the signs coincide in the letters ‘Giulian*’ and differ in their final letters, ‘o’ in the earlier mark and ‘i’ in the contested sign, as well as in the apostrophe and the letter ‘s’ in the contested mark. They also differ in the symbol ® and the word ‘caffè’ in the earlier mark and its figurative element in the shape of a label. However, account must be taken of the facts that the symbol ® and the word ‘caffè’ are the less distinctive and dominant elements of the earlier mark, and that the figurative element is merely decorative and therefore less important. Furthermore, there are fewer differing letters than coinciding letters; the differing letters are placed at the end of the words, which is the last part to catch readers’ attention, as consumers read from left to right. All this amounts to the marks being visually highly similar.

As the differing figurative and verbal elements are less distinctive and dominant than the other elements of the marks and the marks coincide in most letters, which are, furthermore, at the beginning of the signs, the marks are aurally also highly similar.

The EUTM proprietor’s argument that conceptually the marks are dissimilar because the earlier mark will be perceived as being composed of two names, ‘GIUL’ and the god of Roman mythology ‘JANO’, whereas the contested mark consists of another name cannot be upheld for the reasons given below.

The symbol ®, which is the well-known symbol for ‘trade mark’, and the word ‘caffè’, which is meaningful in relation to the goods, are of lesser relevance than the distinctive and dominant element ‘Giuliano’, which will be perceived by many consumers as a male Italian name. The consumers will also perceive the contested mark as an Italian male name and due to the apostrophe and the letter ‘s’, some of the consumers will assume the word refers to something belonging to ‘Giuliani’. As ‘Giuliano’ is the most distinctive and dominant element within the earlier mark and very similar to ‘Giuliani’ in the contested sign, the marks are conceptually highly similar.

As the signs have been found similar, 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 applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, 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 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 some non‑distinctive or weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.

In the present case, the earlier trade mark has, on the whole, an average degree of distinctiveness. The public concerned is the public at large and the degree of attention towards the goods is average.

The marks are highly similar in all three aspects of the comparison due to the similarity between the most distinctive and dominant element of the earlier mark and the only word of the contested mark. Therefore, it is feasible to assume that consumers will attribute the same commercial origin to the goods deemed to be similar, whether to an average or low degree.

Pursuant to the above, the contested trade mark must be declared invalid for the goods and services found to be similar to various degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Michaela SIMANDLOVA

María Belén IBARRA DE DIEGO

Ioana MOISESCU

According to Article 59 EUTMR, any party adversely affected by this decision has 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.