OPPOSITION No B 2 660 267

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

a g a i n s t

Espressocap S.p.A., Via Magenta 41/43, 20010 Bareggio (MI), Italy (applicant), represented by Marco Porsia, Vico San Giorgio 1/2 Scala Destra, 16128 Genova (GE), Italy (professional representative).

On 31/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 660 267 is upheld for all the contested goods.

2. European Union trade mark application No 14 376 701 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 376 701. The opposition is based on inter alia, European Union trade mark registration No 4 454 567. The opponent invoked Article 8(1)(b) and 8(5) 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 registration No 4 454 567.

1. The goods

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

Class 30: Coffee, coffee extracts, coffee-based preparations and beverages; coffee substitutes, extracts of coffee substitutes, preparations and beverages based on coffee substitutes; tea, tea extracts, tea-based preparations and beverages; cocoa and cocoa-based preparations and beverages; chocolate-based preparations and beverages.

The contested goods are the following:

Class 30: Coffee; coffee capsules.

Coffee is identically contained in both lists of goods.

The contested coffee capsules are included in the broad category of the opponent’s coffee. 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 found to be identical are directed at the public at large. The degree of attention will be average.

3. The signs

Earlier trade mark	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 earlier mark is figurative and consists of two word elements, ‘Dolce’ and ‘Gusto’ depicted in title case one above the other and where the capital letters ‘D’ and ‘G’ are vertically joined.

The contested sign is also figurative and it is also formed by two word elements, one above the other, ‘TUTTO’ y ‘GUSTO’ depicted in upper case and white. The letters ‘O’ are replaced by a round shaped element which seems to represent a cup of coffee on a white saucer. There is a thin horizontal line with the colours of the Italian flag between the two verbal elements. All the elements are displayed against a black rectangular background.

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.

The coinciding element ‘GUSTO’ is a Spanish and Italian word which is meaningless for the majority of the relevant public where these languages are not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that does not speak Italian or Spanish.

Whereas the earlier mark does not have any element more dominant or distinctive than others, the figurative elements of the contested sign consisting of the representation of a cup of coffee are non-distinctive for the relevant goods, which are essentially coffee. Moreover, the horizontal line with the colours of the Italian flag will be associated with the Italian origin of the relevant goods and constitutes, therefore, a weak element in this mark, whereas the black rectangular background plays a merely decorative role. Therefore, the most distinctive element of the mark is the verbal element ‘TUTTO GUSTO’.

Visually, the signs coincide in the word ‘GUSTO’ appearing in both marks in second position underneath the first word. However, they differ in the typeface in which the respective verbal elements are depicted, the respective words ‘DOLCE’ and ‘TUTTO’ and in the additional figurative elements of the marks, including the colours, which are less distinctive, as explained above.

Furthermore, with regard to the to the marks’ different graphic depictions, it must be noted 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).

Therefore, the signs are similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different languages of the public under analysis, the pronunciation of the signs coincides in the sound of the letters ‘GUSTO’, present identically in both signs. The pronunciation differs in the sound of the words ‘DOLCE’ (earlier mark) and ‘TUTTO’ (contested mark).

Therefore, the signs are similar to an average degree.

Conceptually, although the public under analysis will perceive the meaning of the figurative elements of the contested sign, as explained above, the other sign has no meaning for this public. As these elements are non-distinctive and cannot indicate the commercial origin of any of the marks, this conceptual difference does not have any impact.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16).

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 present case, the contested goods are identical and the marks are visually and aurally similar to a low and average degree, respectively. The marks coincide in one of the most distinctive elements, ‘GUSTO’, which is placed in the same position in both signs, underneath the other word. Most of the differences between the signs are confined to weak or secondary elements that will not attract consumers’ attention.

It is true that both marks include a different distinctive word element placed at their beginning (‘DOLCE’ and ‘TUTTO’). However, a likelihood of confusion still exists, as the coinciding element plays an independent distinctive role in both signs and will be clearly perceived by consumers. Indeed, 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 or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Therefore, in view of the identity of the goods, it is likely that the relevant public, which will have an average degree of attention, will associate the marks with each other.

Account is taken of the fact 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).

Considering all the above, there is a likelihood of confusion on the part of the public that does not speak Italian or Spanish. 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 registration No No 4 454 567. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union No 4 454 567 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8 (5) EUTMR.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Benoit VLEMINCQ

Begoña URIARTE VALIENTE

Martina GALLE

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.