OPPOSITION No B 2 603 739

Eckes-Granini Group GmbH, Ludwig-Eckes-Platz 1, 55268 Nieder-Olm, Germany (opponent), represented by Eckes-Granini Group GmbH, Heinrich Prinz Reuss Ludwig-Eckes-Platz 1, 55268 Nieder-Olm, Germany (employee representative)

a g a i n s t

Salvatore Borrello, viale liegi 5a, 00198 Roma, Italy (applicant).

On 03/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 603 739 is upheld for all the contested goods, namely

Class 30: Coffee; Artificial coffee; Freeze-dried coffee; Flavoured coffee; Ground coffee; Iced coffee; Decaffeinated coffee; Instant coffee; Unroasted coffee; Coffee in brewed form; Coffee concentrates; Malt coffee; Mixtures of coffee; Coffee extracts; Coffee in whole-bean form; Chocolate coffee; Coffee essences; Coffee pods; Coffee bags; Coffee capsules; Coffee flavorings [flavourings]; Coffee beverages with milk; Mixtures of malt coffee with coffee; Prepared coffee and coffee-based beverages; Roasted coffee beans; Ground coffee beans; Prepared coffee beverages; Mixtures of malt coffee extracts with coffee; Coffee extracts for use as substitutes for coffee; Mixtures of coffee essences and coffee extracts; Coffee substitutes [artificial coffee or vegetable preparations for use as coffee]; Mixtures of coffee and malt; Malt coffee extracts; Coffee based fillings; Coffee oils; Sugar-coated coffee beans; Mixtures of coffee and chicory; Vegetal preparations for use as coffee substitutes; Coffee-based beverages; Vegetable based coffee substitutes; Ice beverages with a coffee base; Coffee-based beverage containing milk; Preparations for making beverages [coffee based]; Mixtures of malt coffee with cocoa; Chicory based coffee substitute; Coffee, teas and cocoa and substitutes therefor; Chocolate bark containing ground coffee beans; Coffee-based beverages containing ice cream (affogato); Chocolate drink preparations flavoured with mocha; Coffee [roasted, powdered, granulated, or in drinks]; Coffee substitutes [grain or chicory based]; Filters in the form of paper bags filled with coffee; Chicory mixtures, all for use as substitutes for coffee; Aerated beverages [with coffee, cocoa or chocolate base]; Extracts of coffee for use as flavours in foodstuffs; Chicory extracts for use as substitutes for coffee; Extracts of coffee for use as flavours in beverages; Tablets (Non-medicated -) made of glucose with a caffeine base; Roasted barley and malt for use as substitute for coffee; Preparations of chicory for use as a substitute for coffee; Chicory and chicory mixtures, all for use as substitutes for coffee.

2. European Union trade mark application No 14 425 111 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against all the goods in class 30 of European Union trade mark application No 14 425 111. The opposition is based on German trade mark registration No 302 014 061 105. 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.

1. The goods

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

Class 30: Coffee; cocoa; Coffee substitutes; Pralines with and without filling; Chocolate goods [included in class 30]; drops

The contested goods are the following:

Class 30: Coffee; Artificial coffee; Freeze-dried coffee; Flavoured coffee; Ground coffee; Iced coffee; Decaffeinated coffee; Instant coffee; Unroasted coffee; Coffee in brewed form; Coffee concentrates; Malt coffee; Mixtures of coffee; Coffee extracts; Coffee in whole-bean form; Chocolate coffee; Coffee essences; Coffee pods; Coffee bags; Coffee capsules; Coffee flavorings [flavourings]; Coffee beverages with milk; Mixtures of malt coffee with coffee; Prepared coffee and coffee-based beverages; Roasted coffee beans; Ground coffee beans; Prepared coffee beverages; Mixtures of malt coffee extracts with coffee; Coffee extracts for use as substitutes for coffee; Mixtures of coffee essences and coffee extracts; Coffee substitutes [artificial coffee or vegetable preparations for use as coffee]; Mixtures of coffee and malt; Malt coffee extracts; Coffee based fillings; Coffee oils; Sugar-coated coffee beans; Mixtures of coffee and chicory; Vegetal preparations for use as coffee substitutes; Coffee-based beverages; Vegetable based coffee substitutes; Ice beverages with a coffee base; Coffee-based beverage containing milk; Preparations for making beverages [coffee based]; Mixtures of malt coffee with cocoa; Chicory based coffee substitute; Coffee, teas and cocoa and substitutes therefor; Chocolate bark containing ground coffee beans; Coffee-based beverages containing ice cream (affogato); Chocolate drink preparations flavoured with mocha; Coffee [roasted, powdered, granulated, or in drinks]; Coffee substitutes [grain or chicory based]; Filters in the form of paper bags filled with coffee; Chicory mixtures, all for use as substitutes for coffee; Aerated beverages [with coffee, cocoa or chocolate base]; Extracts of coffee for use as flavours in foodstuffs; Chicory extracts for use as substitutes for coffee; Extracts of coffee for use as flavours in beverages; Tablets (Non-medicated -) made of glucose with a caffeine base; Roasted barley and malt for use as substitute for coffee; Preparations of chicory for use as a substitute for coffee; Chicory and chicory mixtures, all for use as substitutes for coffee.

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 30

The contested goods coffee (included twice in the contested list of goods) and cocoa are also included in the list of goods of the opponent. Therefore they are identical.

The contested Freeze-dried coffee; Flavoured coffee; Ground coffee; Iced coffee; Decaffeinated coffee; Instant coffee; Unroasted coffee; Coffee in brewed form; Coffee concentrates; Malt coffee; Mixtures of coffee; Coffee in whole-bean form; Chocolate coffee; Coffee pods; Coffee bags; Coffee capsules; Coffee beverages with milk; Mixtures of malt coffee with coffee; Prepared coffee and coffee-based beverages; Roasted coffee beans; Ground coffee beans; Prepared coffee beverages; Mixtures of malt coffee extracts with coffee; Mixtures of coffee and malt; Sugar-coated coffee beans; Mixtures of coffee and chicory; Coffee-based beverages; Ice beverages with a coffee base; Coffee-based beverage containing milk; Mixtures of malt coffee with cocoa; Coffee [roasted, powdered, granulated, or in drinks]; Coffee-based beverages containing ice cream (affogato); filters in the form of paper bags filled with coffee are included in the broad category of the opponent’s coffee. Therefore, these goods are considered identical.

The contested goods artificial coffee; coffee extracts for use as substitutes for coffee; Coffee substitutes [artificial coffee or vegetable preparations for use as coffee]; Vegetal preparations for use as coffee substitutes; Vegetable based coffee substitutes; Chicory based coffee substitute; Coffee substitutes [grain or chicory based]; Chicory mixtures, all for use as substitutes for coffee; Chicory extracts for use as substitutes for coffee; Roasted barley and malt for use as substitute for coffee; Preparations of chicory for use as a substitute for coffee; Chicory and chicory mixtures, all for use as substitutes for coffee are included in the broad category of the opponent’s coffee substitutes. Therefore, these goods are considered identical.

The contested Chocolate bark containing ground coffee beans are included in the broad category of the opponent’s Chocolate goods [included in class 30]. Therefore, these goods are considered identical.

The contested goods aerated beverages [with cocoa or chocolate base] are similar to the opponent’s cocoa. These goods are considered to have similar purpose and they target the same consumers. They are often produced by the same manufacturers and they are also found in the same channels of distribution. Applying the same reasoning, the contested aerated beverages [with coffee] is similar to the opponent’s coffee.

The contested goods Tablets (Non-medicated -) made of glucose with a caffeine base are similar to the earlier goods coffee. These goods have similar nature and are often found in the same distribution channels. Furthermore they are often produced by the same business concerns and they also target the same public.

The contested goods chocolate drink preparations flavoured with mocha and are similar to the earlier goods cocoa. All these goods are found in the same distribution channels and target the same public. They can also be produced by the same producer.

The contested goods teas and substitutes therefor are considered to be similar to cocoa and coffee. These goods have similar methods of use. These goods can also be in competition and are often produced by the same producer. Furthermore they target the same consumers and are found in the same distribution channels.

The contested goods Coffee flavorings [flavourings]; Extracts of coffee for use as flavours in foodstuffs; Extracts of coffee for use as flavours in beverages; coffee extracts; mixtures of coffee essences and coffee extracts; extracts of coffee for use as flavours in foodstuffs; Extracts of coffee for use as flavours in beverages; Malt coffee extracts; Coffee based fillings; Coffee oils; Preparations for making beverages [coffee based]; Coffee essences are considered to be similar to a low degree to the opponent’s coffee. These goods are considered to have the same purpose and method of use.

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 or similar to varying degrees are directed at the public at large. The degree of attention is considered to be average,.

3. The signs

YO
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 a word mark.

The contested sign is a figurative mark. The mark is contained within a label which looks like a stamp. The background of the mark is in different shades of brown and it also contains graphic representations of coffee beans. On the left bottom corner there is a representation of the Italian flag colours. The mark also contains the word ‘YO KAFFE`’ in rather stylized format and in a combination of large and small typeface.

The earlier mark consists of one word and therefore has no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

The element ‘KAFFE`’ and the graphic representation of coffee beans included in the contested sign will be associated with coffee. Bearing in mind that the relevant goods are coffee related goods, this element is non-distinctive for these all the contested goods because they will be perceived to contain coffee. The Italian flag colours are also non distinctive as they just indicate possibly the origins of the products.

The element ‘YO KAFFE`’ in the contested sign is the dominant element as it is the most eye-catching.

Visually, the signs coincide in the word ‘YO’ included in both marks. However, they differ in all other elements, namely in the word ‘KAFFE`’ and in the graphical elements of the contested sign such as the representation of coffee beans, the stamp shape and the Italian flag colours included in the bottom left corner. Furthermore, all of these elements are non-distinctive for all the reasons given above.

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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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, the signs are similar to an average degree.

Aurally, the signs coincide in the sound of the word ‛YO’, present identically in both signs. The pronunciation differs in the sound of the word ‛KAFFE`’ of the contested mark, which has no counterpart in the earlier sign.

Therefore, the signs are similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘KAFFE`’ included in the contested sign, will be associated with ‘coffee’ as the equivalent word in German for this is ‘kaffee’. Furthermore the representation of the coffee beans included in the contested sign will be understood as such. The Italian flag colours included in the contested mark will be understood as such. The words ‘YO’ included in both marks have no meaning for the relevant public.

Since one of the signs will not be associated with any meaning, the marks are not conceptually 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 mark is particularly distinctive by virtue of intensive use or reputation.

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

5. Global assessment, other arguments and conclusion

The goods in question were found to be identical or similar to varying degrees to the earlier goods.

The signs are deemed to be similar in two of the three aspects analysed, namely, on a visual and aural level. In this regard the Opposition Division notes that the earlier mark is fully included in the contested sign. This inevitably implies visual and aural similarity. The other verbal element included in the contested mark (KAFFE`) is considered to be non-distinctive for the goods covered. Furthermore, the other differing elements in the contested sign (background, frame and flag) are all considered non-distinctive and therefore carry less weight.

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).

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.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 014 061 105. It follows that the contested trade mark must be rejected for all the contested goods.

The opposition is also upheld for the goods which were found to be similar to a low degree. The earlier mark word mark is entirely included in the contested sign. Furthermore the Opposition Division notes that the contested mark contains a good number of non-distinctive elements such as the word ‘KAFFE`’, the representation of coffee beans and the flag colours of Italy as such consumers might associate one mark with the other.

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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Lucinda CARNEY

Alistair BUGEJA

Vanessa PAGE

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.