Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 12/09/2018

MEWBURN ELLIS LLP

City Tower

40 Basinghall Street

London

EC2V 5DE

REINO UNIDO

Application No:	017903014
Your reference:	DKD/FT7364409
Trade mark:
Mark type:	Figurative mark
Applicant:	Elite Gold Ltd Portcullis TrustNet Chambers, P.O. Box 3444, Road Town Tortola ISLAS VÍRGENES DE GRAN BRETAÑA

The Office raised an objection on 11/06/2018 pursuant to Article 7(1)(g) and Article 7(2) EUTMR because it found that the trade mark applied for is deceptive for the reasons set out in the attached letter.

The applicant submitted its observations on 03/08/2018, which may be summarised as follows:

1. The EUIPO had previously accepted several marks containing the word ‘Cappuccino’ for tea.

2. There are beverages on the market that contain coffee and tea, for example ‘Marrakesh style tea’ and ‘Yuenyeung’, which is especially popular in Hong Kong and Malaysia. Therefore, the sign applied for is not deceptive with regard to tea.

Pursuant to Article 94 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 that 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, will not be registered.

According to settled case-law, the circumstances for refusing registration referred to in Article 7(1)(g) EUTMR presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (30/03/2006, C‑259/04, Elizabeth Emanuel, EU:C:2006:215, § 47, and the case-law cited therein).

The General Court has held that, once the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived has been established, it becomes irrelevant that the mark applied for might also be perceived in a way that is not misleading (27/10/2016, T‑29/16, CAFFÈ NERO, EU:T:2016:635, § 48; 27/10/2016, T‑37/16, CAFFÈ NERO (fig.), EU:T:2016:634, § 53).

1. As regards the applicant’s argument that a number of similar registrations have 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).

The marks mentioned by the applicant were registered more than 10 years ago. The practice of the Office has evolved over the years.

2. The applicant’s argument that there are beverages on the market that contain coffee and tea, for example ‘Marrakesh style tea’ and ‘Yuenyeung’, is irrelevant to the present case. The sign applied for contains the word ‘cappuccino’, which is widely understood in the Union as ‘coffee with steamed milk’. The word will not be associated with tea by the relevant consumers in the Union. Moreover, in the present case, the figurative elements of the sign (coffee beans, cup of coffee with steamed milk and chocolate) only reinforce the message that what is being sold is coffee (i.e. cappuccino) or products with a cappuccino flavour. The Office therefore maintains that the relevant part of the sign for which registration is sought would clearly be deceptive when used in connection with tea, as it conveys clear information indicating that the products designated under this sign are types of cappuccino (coffee with steamed milk) or have cappuccino as one of their main ingredients (biscuits; chocolate; cakes, etc.). When choosing products bearing the sign applied for, consumers would expect to get cappuccino (or products with a cappuccino flavour). Therefore, they would be deceived as regards the nature of the goods in question. They would think that they had bought cappuccino (or biscuits, etc., with a cappuccino flavour) when in reality they would have bought tea. Moreover, there is a sufficiently serious risk that consumers will be deceived, since both coffee (including cappuccino) and tea are sold in the same department of supermarkets, often next to each other, and may be sold in similar packaging. In addition, they are often bought rather hastily and it is likely that many consumers will not take time to analyse the wording on the packaging, but will choose these goods from the shelf in the (erroneous) belief that they are cappuccino.

The previously registered marks mentioned by the applicant do not contain the word ‘cappuccino’. Moreover, as regards ‘Marrakesh style tea’, the Office disagrees that it contains coffee and tea. The information about the ingredients listed on the website submitted by the applicant does not mention any type of coffee. The description of the drink is ‘Mint Flavoured Green Tea Mix with Sugar’ and the ingredients are ‘Sugar (95.5%), Green Tea Extract Powder (3.4%), Natural Mint Flavouring, Vegetable Oil (Palm, Palm Kernel). May contain Milk and Soya’ (https://www.dolce-gusto.co.uk/coffee-pods/tea-drinks/marrakesh-tea ). As regards ‘Yuenyeung’, as the applicant states, this drink consisting of a mixture of coffee and tea is popular in Hong Kong and Malaysia. This is irrelevant to the present case, as the relevant public in this case comprises consumers in the European Union.

For the abovementioned reasons, and pursuant to Article 7(1)(g) and Article 7(2) EUTMR, the application for European Union trade mark No 17 903 014 is hereby rejected for the following goods:

Class 30 Tea.

The application may proceed for the remaining goods.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

Stanislava MIKULOVA