OPPOSITION No B 3 076 461

Coffea, Société par Actions Simplifiée, Zone Industrielle Des Alizes, 76430 Saint-Vigor D'ymonville, France (opponent), represented by Cabinet Herrburger, 115, boulevard Haussmann, 75008 Paris, France (professional representative)

a g a i n s t

Industry & Technology Company For General Trading & Contracting Ltd., Mazaya Tower 2 - Level 19, Murqab, Khalid Bin Al-Waleed St., Kuwait Business Town, Kuwait City, Kuwait (applicant), represented by Hansepatent Patentanwälte Andresen Scholz PartG mbB, Poststraße 33, 20354 Hamburg, Germany (professional representative).

On 10/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 076 461 is partially upheld, namely for the following contested services:

Class 35: Retail services relating to food; retail services in relation to coffee, teas and cocoa and substitutes therefor; retail services in relation to dairy products and dairy substitutes; retail services in relation to non-alcoholic beverages; retail services in relation to ice creams, frozen yogurts and sorbets; retail services in relation to baked goods, confectionery, chocolate and desserts namely pastries, cakes, tarts and biscuits (cookies), pies, waffles, custard, puddings, mousses; retail services in relation to convenience food and savory snacks namely corn, cereal, flour and sesame based snacks, crackers dumplings, pancakes, pasta, rice and cereal dishes, pies and pastry dishes, sandwiches and pizzas, spring and seaweed rolls, steamed buns, tortilla bread dishes; retail services in relation to processed fruits, fungi and vegetables (including nuts and pulses); retail services in relation to soups and stocks, meat extracts; retail services in relation to tableware, cookware and containers.

Class 43: Provision of food and drink; cafés; café services; coffee shops; coffee shop services; coffee bar services; teahouse services; food and drink catering; bar and restaurant services; bistro services; brasserie services; preparation of food and drink; preparation of meals; providing food and drink for guests; take-away food and drink services.

2. European Union trade mark application No 17 961 410 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 961 410 . The opposition is based on, inter alia European Union trade mark registration No 14 486 062 . 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 14 486 062.

1. The goods and services

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

Class 21: Kitchen utensils and containers, glassware, Cups, Tableware, other than knives, forks and spoons; Coffee services, not of precious metal.

Class 30: Coffee in all its forms, whether roasted or not; Tea, Cocoa, Chocolates, Sugar, Artificial coffee; Flour and preparations made from cereals, Bread, Cookies; Pastry and confectionery, ices; Confectionery, honey, treacle; Salt, mustard; Vinegar, sauces (condiments); Spices.

Class 43: Coffee shops; Bar services; Restaurant services; Self-service restaurants; Cafeterias.

The contested services are the following:

Class 35: Retail services relating to food; retail services in relation to coffee, teas and cocoa and substitutes therefor; retail services in relation to dairy products and dairy substitutes; retail services in relation to non-alcoholic beverages; retail services in relation to ice, ice creams, frozen yogurts and sorbets; retail services in relation to baked goods, confectionery, chocolate and desserts namely pastries, cakes, tarts and biscuits (cookies), pies, waffles, custard, puddings, mousses; retail services in relation to convenience food and savory snacks namely corn, cereal, flour and sesame based snacks, crackers dumplings, pancakes, pasta, rice and cereal dishes, pies and pastry dishes, sandwiches and pizzas, spring and seaweed rolls, steamed buns, tortilla bread dishes; retail services in relation to fresh fruits, nuts, vegetables and herbs; retail services in relation to processed fruits, fungi and vegetables (including nuts and pulses), prepared salads; retail services in relation to soups and stocks, meat extracts, meats, fish, seafood and molluscs; retail services in relation to tableware, cookware and containers.

Class 43: Provision of food and drink; cafés; café services; coffee shops; coffee shop services; coffee bar services; teahouse services; food and drink catering; bar and restaurant services; bistro services; brasserie services; preparation of food and drink; preparation of meals; providing food and drink for guests; take-away food and drink services.

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 services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

A low degree of similarity between the goods sold at retail and the other goods may be sufficient to find a low degree of similarity with the retail services provided that the goods involved are commonly offered for sale in the same specialised shops or in the same sections of department stores or supermarkets, belong to the same market sector and, therefore, are of interest to the same consumers.

Therefore, the contested retail services relating to food; retail services in relation to coffee, teas and cocoa and substitutes therefor; retail services in relation to dairy products and dairy substitutes; retail services in relation to non-alcoholic beverages; retail services in relation to ice creams, frozen yogurts and sorbets; retail services in relation to baked goods, confectionery, chocolate and desserts namely pastries, cakes, tarts and biscuits (cookies), pies, waffles, custard, puddings, mousses; retail services in relation to convenience food and savory snacks namely corn, cereal, flour and sesame based snacks, crackers dumplings, pancakes, pasta, rice and cereal dishes, pies and pastry dishes, sandwiches and pizzas, spring and seaweed rolls, steamed buns, tortilla bread dishes; retail services in relation to processed fruits, fungi and vegetables (including nuts and pulses); retail services in relation to soups and stocks, meat extracts are similar at least to a low degree to the opponent’s coffee in all its forms, whether roasted or not; tea, cocoa, artificial coffee; ices; preparations made from cereals, bread, cookies; pastry and confectionery; sauces (condiments); spices in Class 30. On the one hand, some of the goods involved in the abovementioned contested retail services are identical to some of the opponent’s goods, for example coffee, teas and cocoa are identically contained in both lists despite the differences in the wordings. The term substitutes therefor refers to inter alia coffee which means that these goods are identical to the opponent’s artificial coffee. The contested retail services relating to food concerns a broad range of foodstuffs, including the opponent’s coffee in all its forms, whether roasted or not. On the other hand, the rest of the abovementioned contested retail services concern foodstuffs that are similar, to varying degrees, to the opponent’s goods. For example, dairy products and dairy substitutes, non-alcoholic beverages, frozen yoghurts, custard and puddings, various savoury snacks and convenience foods, and the opponent’s goods as listed above, are closely connected from the consumers’ perspective, e.g. they belong to the same market sector, it is customary practice to market such goods together, they are commonly sold in the same specialised shops or in the same sections of grocery stores and supermarkets. Processed fruits, fungi and vegetables (including nuts and pulses) include tinned or otherwise preserved foodstuffs which are commonly found in the same sections of grocery stores and supermarkets as the opponent’s sauces (condiments). Soups and stocks, meat extracts include dry mixes for preparing soups, stock in dry or jelly form, meat extract powders and other goods that are typically used for seasoning/adding a flavour to a dish when cooking and therefore, are closely connected, from a commercial perspective, to the opponent’s spices.

In the same sense, the contested retail services in relation to tableware, cookware and containers are similar to the opponent’s kitchen utensils and containers, glassware, cups, tableware, other than knives, forks and spoons in Class 21, since the goods involved in the retail services at issue are identical to the abovementioned goods covered by the earlier mark. Tableware is identically mentioned in both lists, also bearing in mind that cutlery does not belong in Class 21, and cookware and containers overlap with the opponent’s kitchen utensils and containers.

However, the contested retail services in relation to ice; retail services in relation to fresh fruits, nuts, vegetables and herbs; retail services in relation to prepared salads; retail services in relation to meats, fish, seafood and molluscs and the opponent’s goods in Classes 21 and 30 and are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the retail services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and are of interest to the same consumers. Here these conditions are not fulfilled, since the goods concerned are not sold in the same specialist shops, or the same sections of department stores or supermarkets. Admittedly, like most goods, they can now be found in large retail stores. However, in such outlets the goods at issue are sold in specialist departments which, even though they may be close, are nonetheless separate. In such circumstances, the distribution channels of the goods and services cannot be considered to be the same (04/12/2019, T‑524/18, Billa / BILLABONG et al., EU:T:2019:838, § 51).

The remaining retail services are not similar to the opponent’s services in Class 43 either. The opponent’s services are intended for serving food and drinks directly for consumption. They are provided by undertakings, such as bars and restaurants, that do not usually provide retail services that consist of the bringing together, for the benefit of others, of a variety of goods, enabling consumers to conveniently see and buy them. These services are not complementary or directly interchangeable. Although they are directed at the same consumers, this factor is not sufficient in itself to lead to the conclusion of any relevant degree of similarity.

It follows that the contested retail services in relation to ice; retail services in relation to fresh fruits, nuts, vegetables and herbs; retail services in relation to prepared salads; retail services in relation to meats, fish, seafood and molluscs are dissimilar to all of the opponent’s goods and services.

Contested services in Class 43

The contested Provision of food and drink; cafés; café services; coffee shops; coffee shop services; coffee bar services; teahouse services; food and drink catering; bar and restaurant services; bistro services; brasserie services; preparation of food and drink; preparation of meals; providing food and drink for guests; take-away food and drink services are identical to the opponent’s coffee shops; bar services; restaurant services, respectively, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

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 and services found to be identical or similar to various degrees are directed at the public at large.

The degree of attention is 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 figurative mark contains words ‘cofféa torréfacteurs passionnés’, placed on a dark rectangular background.

The contested figurative sign contains a word ‘COFFEA’, a depiction of a bird and Arabic characters.

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 verbal element ‘torréfacteurs passionnés’, is meaningful for the French-speaking part of the public in the relevant territory. To take into account the semantic content of this element and for the reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison on the French-speaking part of the public.

The string of letters ‘COFFEA’ in both marks will bring into mind the English term ‘COFFEE’ with which even most of the French public is familiar. Furthermore, it also evokes the French word ‘CAFÉ’. Consequently, in the view of the Opposition Division, and contrary to what the applicant argues, it will not be understood by the relevant public at large taken under analysis as the genus of flowering plants in the family Rubiaceae (the coffee beans of some species of which are used to make various coffee beverages and products). In case of an average consumer, knowledge of scientific terms cannot in general be assumed (see, by 29/01/2020, R 499/2019-2, COFFEA CLUB (fig.) / Cofféa torréfacteurs passionnés (fig.) et al. 11) (12/07/2012, T-517/10, Hypochol, EU:T:2012:372, § 42; 16/03/2018, R 711/2017-2, nature research (fig.), §§ 47-48). (by analogy to decision 29/01/2020, R 499/2019-2, COFFEA CLUB (fig.) / Cofféa torréfacteurs passionnés (fig.) et al. § 38). Therefore, this element is thus allusive in relation to part of the goods (e.g. coffee and coffee substitutes, or goods that could have a coffee flavour, such as ice creams or desserts, or goods related to serving of coffee, like cups or café services), but arbitrary for the remaining goods (e.g. processed fruits and vegetables). The same considerations apply in relation to the services at issue. Therefore, it is considered sufficiently imaginative and has, as a whole, of somewhat weaker distinctiveness for part of the goods and services, and normally distinctive for the remaining in both marks.

In the earlier mark, the words ‘torréfacteurs passionnés’ refer to passionate coffee roaster or merchant, thus being weak for coffee-related goods and services in Classes 21, 30 and 43 and normally distinctive for the remaining goods in Class 30. These two words are written in a very small typeface and placed on a secondary position below the dominant element COFFEA. However, due to its small size and the position in the sign (below the term ‘cofféa’), the words ‘torréfacteurs passionnés’ are much less visible than the dominant element ‘cofféa’.

The dark rectangular background is seen as a mere label and therefore considered of having no distinctive value.

The contested sign contains a depiction of a bird with a cup on its back. Considering the services, the distinctiveness of this element is average because it is fanciful. The mark also contains some Arabic characters. Although the relevant public is likely to perceive the Arabic characters as what they are, these do not allow the relevant public to perceive them as a badge of origin. The consumers will neither be able to pronounce it nor to memorize it as a word. Furthermore, they are not memorable and are perceived as an embellishment of less than average distinctive value.

In the contested sign, the word ‘COFFEA’ and the image of a bird are the co-dominant elements as they are the most eye-catching.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, top to bottom, which makes the part placed at the left or top of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in their first word element ‘COFFEA’ and differ in the remaining elements and stylisation. The element ‘COFFEA’ is the dominant element in the earlier mark, and a co-dominant element in the contested sign. The use of ‘E’ as the fifth letter of the contested sign instead of the ‘é’ of the earlier mark will easily go unnoticed as the accent is barely perceptible and is likely to be disregarded by the relevant public.

It is 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, depending on the degree of distinctiveness of the common element ‘COFFEA’ in relation to various goods and services, the degree of similarity between the signs varies accordingly, from low to average.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛COFFEA’, which will be identical in both signs (whether the fifth letter is ‘É’ or ‘E’) for the relevant public taken into account and also form the beginning of both signs. General Court has already assessed that only the dominant part of the mark would normally be pronounced when enunciated by consumers and the relevant consumer will tend to shorten long signs (11/01/2013, T-568/11, interdit de me gronder IDMG, EU:T:2013:5, § 44).

Therefore, where the public omits the secondary element ‘torréfacteurs passionnés’ from the earlier mark, the signs are aurally identical. Otherwise, the degree of similarity between the signs is at least low, given that the differentiating element is weak for some of the goods and services, and distinctive for the rest.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs refer to the same concept related to coffee, conveyed by the common element and notwithstanding its weaker distinctiveness for part of the goods/services, the signs are considered conceptually similar at least to a low degree on the account of the differing elements.

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 clear meaning for any of the goods and services 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 some weak or non-distinctive elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested services were found partially identical or similar to various degrees and partially dissimilar. The relevant public consists of public at large, whose degree of attention is average.

The marks were found visually similar at least to a low degree, aurally identical for part of the public or otherwise similar to a low degree, and conceptually similar at least to a low degree, on the account of the same word ‘COFFEA’ in both marks. The first and dominant element of the earlier mark is entirely comprised in the contested sign, of which it also forms its beginning and a co-dominant element.

As a rule, when the earlier trade mark, or the only distinctive element, is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T‑519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T‑260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T‑179/11, Seven Summits, EU:T:2012:254, § 26).

The consumers naturally tend to shorten long marks in order to reduce them to the elements that they find easiest to refer to and remember (see, to that effect, 07/02/2013, T-50/12, Metro Kids Company, EU:T:2013:68, § 41; 30/11/2011, T-477/10, SEⓒSports Equipment, EU:T:2011:707, § 55; 09/04/2013, T-337/11, Giuseppe by Giuseppe Zanotti, EU:T:2013:157, § 36; 28/09/2016, T-539/15, SILICIUM ORGANIQUE G5 LLR-G5, EU:T:2016:571, § 56), it is very likely that a significant proportion of the relevant consumers will omit the additional components when referring to the respective signs. According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (26/06/2018, T-556/17, STAROPILSEN; STAROPLZEN, 29/01/2020, R 499/2019-2, COFFEA CLUB (fig.) / Cofféa torréfacteurs passionnés (fig.) et al- EU:T:2018:382, § 34; 23/10/2002, MATRATZEN, T-6/01, EU:T:2002:261, § 30; 10/12/2008, T-290/07, METRONIA, EU:T:2008:562, § 41).

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.

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).

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 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).

Therefore, taking into account the principle of interdependence and the imperfect recollection of the relevant public, despite some differences between the signs, which are, however, incapable of maintaining a sufficient distance between the overall impressions given by the signs, a likelihood of association between the signs cannot be excluded, in relation to goods and services that are identical or similar, including those similar to a low degree.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark. Due to the sufficient similarity between the marks, the contested trade mark must be rejected also for the services found similar to a low degree.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

The opponent has also based its opposition on the earlier French trade mark registration No 1 652 306 ‘COFFEA’, registered for the following goods and services:

Class 9: Distributors of food products and beverages.

Class 30: Coffee in all its forms, whether roasted or not.

Class 43: Coffee tasting houses.

Since this mark covers the same or a narrower scope of goods and services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services. Since the opposition is not upheld on the basis of this earlier mark, it is unnecessary to examine whether it was duly substantiated or enter into the issues related to proof of use requested in relation to this earlier mark.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Solveiga BIEZA

Erkki Münter

Félix ORTUÑO LÓPEZ

According to Article 67 EUTMR, any party adversely affected by this decision has 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.