Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 04/05/2017

COFFEE KING LIMITED

Sean Le. Tissier

Clifton House, Ashville Point Sutton Weaver

Runcorn Cheshire West and Chester WA7 3FW

REINO UNIDO

Application No:	016186413
Your reference:
Trade mark:	COFFEE KING
Mark type:	Figurative mark
Applicant:	COFFEE KING LIMITED Clifton House Ashville Point, Sutton Weaver, Runcorn Cheshire West and Chester WA7 3FW REINO UNIDO

The Office raised an objection on 04/01/2017 pursuant to Article 7(1)(g) EUTMR and Article 7(2) EUTMR, for the reasons set out in the attached letter.

The applicant submitted its observations on 25/01/2017, which may be summarised as follows:

1. The applicant indicates that his intention was to apply for beverages based on coffee, beverages based on tea, beverages based on coca, beverages based on chocolate. However when completing the online form, these options were not available.

2. The applicant refers to a similar registered EUTM No 5 257 977 ‘Costa Coffee’.

Pursuant to Article 75 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Article 7(1)(g) EUTMR provides that marks which are of such a nature as to deceive the public, for instance, as to the nature, quality or geographical origin of the goods or services, shall not be registered.

The concept of ‘deceit’ presupposes the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived by a ‘sufficiently specific designation’ of potential characteristics of the goods and services covered by the trade mark. Only where the targeted consumer is made to believe that the goods and services possess certain characteristics, which they do not in fact possess, will he be deceived by the trade mark (24/09/2008, T‑248/05, ‘I.T.@Manpower’, § 64 and 65).

It is important to point out that the assessment of the sign has to be made in relation to the goods or services in respect of which registration of the sign is sought regardless of what was the intention of the applicant when filling in the application form; therefore in the present case the relevant goods in Class 30 are coffee, teas and cocoa and substitutes therefor; Baked goods, confectionery, chocolate and desserts. However, for the sake of completeness, it must be notes that even if the list of goods in Class 30 would have contained beverages based on coffee, beverages based on tea, beverages based on coca, beverages based on chocolate, the outcome of the assessment would not have necessarily been different in respect of these goods.

As stated in the Notice of grounds for refusal, in the present case the mark contains the word ‘COFFEE’, which would be understood by the relevant consumer as a meaningful, namely: ‘a drink consisting of an infusion of the roasted and ground or crushed seeds of the coffee tree’. Considering that the word ‘COFFEE’ indicates unambiguously the kind of goods, the use of the mark on teas and cocoa and substitutes therefor; coffee substitutes would mislead the public. Non-deceptive use of the mark applied for in relation to the abovementioned goods is impossible.

As regards the applicant’s argument that a similar registration has been accepted by the EUIPO, according to settled case‑law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

For the abovementioned reasons, and pursuant to Article 7(1)(g) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 16 186 413 is hereby rejected for the following goods:

Class 30 Teas and cocoa and substitutes therefor; Coffee substitutes.

The application may proceed for the remaining goods and services.

According to Article 59 EUTMR, you have 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.

Sandra KASPERIŪNAITĖ