OPPOSITION No B 2 700 980

J.J. Darboven Holding AG & Co. KG, Pinkertweg 13, 22113 Hamburg, Germany (opponent), represented by Uexküll & Stolberg Partnerschaft von Patent- und Rechtsanwälten mbB Beselerstr. 4, 22607 Hamburg, Germany (professional representative)

a g a i n s t

Intenson sp. z o.o., Całowanie 94G, 05480 Karczew, Poland (applicant), represented by Bożenna Kalewska, ul. Bohaterewicza 8 m.30, 03-982 Warsaw, Poland (professional representative).

On 28/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 700 980 is upheld for all the contested goods, namely

Class 30: Coffee flavorings [flavourings]; tea; coffee; cocoa; vegetal preparations for use as coffee substitutes; coffee; ground coffee; flavoured coffee; malt coffee; coffee (unroasted -); artificial coffee; freeze-dried coffee; chocolate coffee; decaffeinated coffee; coffee, teas and cocoa and substitutes therefor.

2. European Union trade mark application No 14 826 416 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 620.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 826 416. The opposition is based, inter alia, on European Union trade mark registration No 8 354 367. 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 registration No 8 354 367.

1. The goods

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

Class 29: Coffee creamers; milk and milk products, in particular cream, condensed milk; powdered toppings, namely beverage powders with a milk base for creating a foam head.

Class 30: Coffee, coffee products, coffee extract, artificial coffee, tea and tea products, including flavoured teas, fruit teas and herbal teas (not for medical purposes), tea extracts, cocoa, cocoa powder and cocoa products, including chocolate powder, chocolate flakes and chocolate-based beverages, instant products for preparing coffee, tea and cocoa-based beverages, iced cappuccino, and hot, milky beverages, namely cappuccino, cafe au lait and latte (coffee); coffee, tea and cocoa flavourings and flavouring concentrates; honey, sugar and confectionery, pralines, chocolate and chocolate goods, pastry and confectionery, in particular cakes and pastries; beverage preparations with a base of coffee, tea, cocoa and drinking chocolate.

After the limitation of the scope of the opposition requested by the opponent on 21/11/2016, the contested goods are the following:

Class 30: Coffee flavorings [flavourings]; tea; coffee; cocoa; vegetal preparations for use as coffee substitutes; coffee; ground coffee; flavoured coffee; malt coffee; coffee (unroasted -); artificial coffee; freeze-dried coffee; chocolate coffee; decaffeinated coffee; coffee, teas and cocoa and substitutes therefor.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The terms ‘in particular’ and ‘including’ used in the opponent’s list of goods in Classes 29 and 30, respectively, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods in Class 30 to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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.

Coffee flavorings [flavourings]; tea (listed twice); coffee (listed three times); cocoa (listed twice); artificial coffee are identically contained in both lists of goods.

The contested ground coffee; flavoured coffee; coffee (unroasted -); freeze-dried coffee; chocolate coffee; decaffeinated coffee are included in the broad category of the opponent’s coffee products. Therefore, they are identical.

The contested vegetal preparations for use as coffee substitutes; malt coffee; substitutes for coffee, teas and cocoa are natural or artificial substances used to replace coffee, tea or cocoa. They are highly similar to the opponent’s coffee, tea, cocoa, as they can have the same producers, end users, distribution channels and method of use. Furthermore, they are in competition.

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 various degrees are directed at the public at large. The degree of attention will vary from average to low, depending on the nature, price and/or frequency of purchase of the goods in question.

3. The signs

CAFÉ INTENCIÓN
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 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.

In some territories the elements ‘INTENCIÓN’ and ‘INTENSON’ of the marks are not meaningful, while the element ‘CAFÉ’ of the earlier mark has a meaning. This is the case, for instance, for the German-, Bulgarian and Slovenian-speaking parts of the public. The Opposition Division will proceed with the evaluation of the decision on this basis, that is in relation to the mentioned parts of public.

The earlier mark is a word mark consisting of the words ‘CAFÉ’ and ‘INTENCIÓN’.The first word will be understood by the relevant public and has a weak distinctive character for the relevant goods, since the public has been largely exposed to the word on the market and considering that ‘CAFÉ’ is the equivalent of the German ‘cafe’, the Bulgarian ‘кафене’ and the Slovenian ‘kafeterija’. The element ‘CAFÉ’, indeed, will be understood as referring to the place where the relevant goods are served (i.e. a bar or a small restaurant selling light meals and drinks). On the contrary, the word ‘INTENCIÓN’ has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is a figurative mark that includes the word ‘INTENSON’ in title case slightly stylised grey letters, which has no meaning and, hence, an average degree of distinctiveness. The sign also contains the depiction of a green figurative element that part of the relevant public will perceived as a stylised green leaf, which will have a weak distinctive character and a limited relevance in the present comparison, since it will be associated with the plants from which the relevant products are obtained. On the other hand, another part of the public will perceive it as an abstract element, which has no connection with the relevant goods and is, therefore, distinctive. Nonetheless, it shall 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). As a consequence, the distinctive figurative device, as well as the stylisation of the word ‘INTENSON’, has less impact than the verbal element of the marks. The mark has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, given that the element ‘CAFÉ’ of the earlier mark has a weak distinctive character and cannot function as an indication of commercial origin, consumers will focus on the second verbal element of the mark, ‘INTENCIÓN’. Therefore, the signs coincide in the letters ‘INTEN_ON’. They differ in the figurative element of the contested sign which will, however, have less impact for the reasons explained above. The signs also differ in the letters ‘CI’ and in the accent on the letter ‘O’ of the earlier mark, as well as in the ‘S’ of the contested sign. Nonetheless, the accent, being a punctuation mark, does not have any distinctive character and the other dissimilarities are placed in the middle of two words that coincide in their first five and last two letters. Therefore, the signs are visually similar at least to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘INTEN_ON’, present identically in both signs. The pronunciation differs in the sound of the letters ‘CI’ of the earlier mark and ‘S’ of the contested sign. However, for the relevant public these letters, as well as the accent on the letter ‘O’ of the earlier mark, do not constitute a remarkable aural difference and may be easily overheard.

Therefore, in view of the above and bearing in mind the weak distinctive character of the differing element ‘CAFÉ’ and that the figurative element will not be pronounced, the signs are aurally similar at least to an average degree.

Conceptually, in the earlier mark the only element conveying a concept is the word ‘CAFÉ’, which has, as explained above, a weak distinctive character. For the part of the public that perceives the figurative element of the contested sign as a green abstract device, the contested sign has no meaning, since the word ‘INTENSON’ is a fanciful term and the figurative element does not evoke any specific concept. Therefore, the signs are not conceptually similar, notwithstanding the low degree of distinctiveness of the word ‘CAFÉ’ in the earlier mark. For the part of the public that will perceive the figurative device of the contested sign as a green leaf, the signs will be conceptually dissimilar, notwithstanding the low degree of distinctiveness of the mentioned graphic element.

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are partly identical and partly highly similar. They target the public at large, whose degree of attention is considered to vary from average to low. The earlier mark enjoys a normal degree of distinctive character in connection with the relevant goods.

The signs are visually and aurally similar at least to an average degree, due to the fact that the distinctive portion of the earlier mark and the only verbal element of the contested sign share the combination of letters ‘INTEN_ON’. The signs differ in non-distinctive (i.e. the accent on the letter ‘O’ of the earlier mark), weak (i.e. the word ‘CAFÉ’ of the earlier mark) or secondary (e.g. the figurative device of the contested sign, which will be weak for the part of the public that sees it as a green leaf) elements. The fact that the marks are not conceptually similar must be put in the context of the earlier mark containing a weak element, namely the word ‘CAFÉ’, which has a lesser impact in the present comparison.

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. 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public mentioned above even regarding consumers with an average degree of attention. As stated 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 8 354 367. It follows from the above that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 8 354 367, ‘CAFÉ INTENCIÓN’, 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Andrea VALISA

Orsola LAMBERTI

María Clara IBÁÑEZ FIORILLO

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.