This article first appeared on WTR Daily, part of World Trademark Review, in (December/2016). For further information, please go to www.worldtrademarkreview.com
In Caffè Nero Group Ltd v European Union Intellectual Property Office (EUIPO) (Cases T-37/16 and T- 29/16), the EU General Court (Third Chamber) upheld a decision by the EUIPO First Board of Appeal finding that the word mark CAFFÈ NERO and the stylised mark below both lacked distinctive character for some of the goods in Classes 30 and 35 of the Nice Classification pursuant to Article 7(1)(b), (c) and (g) of Regulation 207/2009.
On November 6 2014 Caffè Nero Group Ltd filed an application for the registration of the contested
trademarks which was refused by the EUIPO with the examiner decision of March 20 2015.
The applicant appealed and the EUIPO Board of Appeal confirmed that the trademarks were eligible for registration for some of the goods. However, refusal was maintained for the majority of the goods and services, namely the main goods which Caffè Nero was relying upon.
In particular, not only did the Board of Appeal confirm refusal for goods such as coffee and coffee expresso beverages but also for goods such as “cookies, pastries, chocolate bars, ices, cakes, flans and puddings” as well as many other goods which have nothing to do with black coffee.
In fact, on a further appeal, the EU General Court upheld the decision of the Board of Appeal on the grounds of deception, apart from descriptiveness. It held that:
the mark applied for will be perceived as a direct and obvious reference to the nature of the goods and of the services relating to the goods; in this instance, it will be understood as an indication that they are or contain black coffee or taste like black coffee.
The applicant argued that for the purpose of applying Article 7(1)(c) of Regulation 207/2009, it was
necessary to consider, on the basis of a given meaning of the sign in question, whether, from the point of view of the target public, there was a sufficiently direct and specific association between the sign CAFFÈ NERO and the goods or the services in respect of which registration was sought.
In particular, Caffè Nero contended that the expression ‘caffè nero’ had no meaning either in Italian or in the Italian coffee culture. That was because coffee is referred to by using a specific name, not by reference to its colour.
In response, the EU General Court found that:
the fact that the evidence put forward in support of that contention, relating to coffee culture in Italy, does not mention the expression ‘caffè nero’ does not prove, as such, that the sign at issue will not be understood as referring to black coffee as understood by the Board of Appeal.… Nevertheless, even if it were true that the expression ‘caffè nero’ were not a part of that culture, it would be incapable of altering the fact that, when faced with that expression, the Italian-speaking public will understand that it refers to coffee served as a beverage without any additions.
Most importantly, as far as Article 7(1)(g) was concerned, the applicant argued that there was no deceptive use of CAFFÈ NERO. In fact, it claimed that a non-deceptive use of the sign CAFFÈ NERO is possible for the goods and services concerned because the mark could be perceived as referring to goods and services supplied by a coffee house with the name ‘Nero’.
However, the EU General Court upheld the finding of the Board of Appeal, stating that:
consumers were likely to believe that some of the goods referred to in the application for registration,
namely tea, cocoa, coffee substitutes, herb tea, tea beverages, cocoa and cocoa-based preparations, cocoa beverages, preparations and mixes for making the aforesaid goods, and powdered chocolate, were or contained black coffee, even if, in actual fact, this was not the case. In that regard, it pointed out that those goods were sold in packaging which is quite similar to that used for coffee and that consumers may often have to buy those goods rather hastily, without necessarily taking the time to analyse the wording on the packaging.
As a result, it seems that the EUIPO enhanced its refusals based on deceptiveness pursuant to Article 7(1) (g) of Regulation 207/2009 so adding a stricter prerequisite to the basic generic/descriptive thresholds.