Q U espresso | Decision 2641721

Date Published: Sep 22, 2017

OPPOSITION No B 2 641 721

Quality Espresso, S.A., Motores, 1-9, 08040 Barcelona , Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

Αβεκ Βεκρακοσ Ανωνυμη Εμπορικη Και Βιομηχανικη Εταιρεια Επεξεργασιασ Εμποριασ Και Διανομησ Καφε Και Συναφων Ειδων, Ναυπλιου 10-14, 14452  Μεταμορφωση Αττικησ, Greece (applicant) represented by Πετροσ Βελλιδησ, Δωδεκανησου 22, 54626 Θεσσαλονικη, Greece (professional representative).

On 20/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 641 721 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 563 985  , namely:

Class 30: Coffee; Ice, ice creams, frozen yogurts and sorbets; Sugars, natural sweeteners, sweet coatings and fillings, bee products; Baked goods, confectionery, chocolate and desserts.

Class 40: Food and beverage treatment.

Class 43: Providing food and drink.

The opposition is based on:

European trade mark registration No 4 900 651 for the following goods and services:

Class 7: Coffee grinders, other than hand operated, water-heaters (parts of machines); filters (machine parts); electric fruit presses (juice extractors) for household purposes; steam engines.

Class 11: Electric coffee pots; water heaters; water heating installations; coffee roasters; coffee roasters; mixer taps for water or steam pipes.

Class 21: Non-electric coffee percolators, non-electric coffee filters; coffee grinders (hand-operated); coffeepots, non-electric, not of precious metal; whisks (non-electric); non-electric fruit presses (juice extractors) for household purposes.

European trade mark registration No 6 397 384 (same mark as above):

Class 30: Coffee, tea, artificial coffee, coffee flavourings, coffee-based beverages, unroasted coffee; cocoa, chocolate, chocolate-based beverages.

Class 35: Commercial retailing of coffee, tea, cocoa and electric household appliances, in particular electric coffee makers and coffee grinders; sale via global telecommunications networks of coffee, tea, cocoa and electric household appliances, in particular coffee makers and coffee grinders.

Class 39: Distribution, storage and transport of goods derived from coffee, tea and cocoa and electric household appliances, in particular electric coffee makers and coffee grinders.

European trade mark registration No 6 397 145  for the same goods and services in Classes 30, 35 and 39 as listed above.

European trade mark registration No 4 900 635  for the same goods in Classes 7, 11 and 21 as EUTM No 4 900 651.

And the earlier well known marks in Spain:

for the same goods as EUTM No 4 900 651.

for the same goods and services as EUTM No 6 397 384.

for the same goods and services as EUTM No 6 397 145.

for the same goods as EUTM No 4 900 651.

The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in this regard whilst for the well-known marks, Article 8(1)(b) in conjuntion with Article 8(2)(c) EUTMR was invoked.

The Opposition Division will proceed to examine the ground under Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

The goods and services for which reputation has been claimed are all the goods and services protected by the earlier marks and as listed previously.

A proof of use request was submitted in connection with all marks except for EUTM No 4 900 651. Before proceeding to the issue of proof of use, the assessment will firstly look at the reputation and evidence submitted in this regard.

1. Reputation of the earlier trade mark

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 16/09/2015. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union, more precisely in Spain, as indicated by the opponent, prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation and as previously listed.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

Within the prescribed deadline (19-20/04/2016), the opponent submitted evidence and the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

Annex 1: 18 invoices dated between March 2011 and November 2015, mostly for grinders sold in several Member States of the EU (France, Spain, Portugal);

Annex 2: Brochure showing three ‘QUALITY ESPRESSO’ branded goods, mostly grinders;

Annex 3: Document that links the reference and description of the products referred to in Annexes 1-2;

Annexes 4 - 9: Press clippings (April 2013 – November 2014) mostly press notes emanating from the opponent itself. However there are other sources such as ‘Financialfood.es’, Forumdelcafe.com,  Expansion,  (that states ‘The Catalonian company that manufactures espresso coffee machines, Spanish market leader with a share of 40%’; GlobalCoffeeReview.com (concerning ‘Quality Espresso’ and its solidarity campaign against child malnutrition); Managingsport.com (concerning the opponent’s sponsorship of an event) one states ‘…Quality Espresso is the leading company within the Spanish market for the manufacture of espresso coffee machines and the fifth ranked company internationally’; Comunicaffe.com; La Vanguardia which states, inter alia, ‘The Company, which still has Spain as its main market, which exports 30% of its production, has signed an agreement with…Its main external markets are France, United Kingdom and Italy. The information relates to coffee machines and grinders mostly targeting a professional restaurant based sector but also average consumers.

Annex 10: Article from Interempresas.net providing information on the opponent’s branded machines

Annex 11: Article from ‘Equipamiento hostelero’;

Article 12: Article from ‘Global Coffee Report’

For the sake of completeness, after the deadline for substantiating the opposition, the opponent submitted further evidence in response to the proof of use request made by the applicant. However, this evidence received later cannot be taken into consideration in this context given that according to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office. As the deadline for substantiating the opposition expired on 25/05/2016, any evidence received afterwards cannot be taken into account.

Assessment of the evidence

Though some of the material is not particularly relevant, such as Annexes 1-2, insofar as it only shows some proof of use, the remaining annexes do include an important amount of independent and credible sources that support the claim that the mark has, at least, a certain degree of reputation. Despite some of the press clippings and articles deriving from the opponent (press notes) and being dated after the filing of the contested mark, there are important indications in the remaining pieces of evidence, independent and third party originating documents that support the opponent’s claim. For example there are several independent sources, listed above, which refer to the opponent’s brand and its ‘main market leader’ position as concerns coffee machines and grinders. Further such articles also refer to the important market share in Spain (40%) and the fact that it also has other ‘main’ markets within the EU.

The Opposition Division is convinced by the evidence that the mark

does have a certain reputation, and did have prior to the filing of the contested mark. Further the material shows that this reputation existed within the EU, more specifically Spain as claimed by the opponent. However, this reputation only exists in relation to coffee grinders, other than hand operated in Class 7; electric coffee pots in Class 11 and non-electric coffee percolators, non-electric coffee filters; coffee grinders (hand-operated); coffeepots, non-electric, not of precious metal in Class 21.

There is no mention of any of the other goods and services covered by the earlier marks as listed above and nor for the other earlier marks.

Consequently, the examination will only proceed as far as concerns, for the goods mentioned above.

This mark and goods only correspond to EUTM No 4 900 651, for which proof of use was not requested and is not an issue. The assessment will therefore proceed only for this mark.

1. 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 Opposition Division finds it relevant to firstly refer to the sole verbal component that the marks share, namely ‘espresso’, the only word from the contested sign and the second of two in the earlier mark. This element will be associated with a strong black coffee made by forcing steam through ground coffee beans. In relation to the goods for which reputation has been found, the term is descriptive and non-distinctive given that it simply refers to the kind of coffee that can be (ultimately) made from the goods. This assertion is also valid for the contested goods and services  which are mostly coffee and coffee-based goods and services or at least could extend to these goods due to broad terms used (such as in Class 40 and 43). Indeed, even contested goods such as ice-cream, yogurt, sorbets, baked goods, confectionery, chocolate and desserts are frequently made with a coffee base or taste and it is only in relation to the contested sugars, natural sweeteners, sweet coatings and fillings, bee products (contested mark) that the term is distinctive as there is no such association.

As described above, where the element is descriptive, its role in the signs is reduced since it will be perceived as referring to the goods and services and not as indicating commercial origin.

In the earlier mark, QUALITY will be largely understood as referring to the degree of excellence of the goods and is non-distinctive since it merely qualifies the appealing characteristics of ‘espresso’ and the goods protected. Its non-distinctive and qualifying nature means it has no capacity to distinguish goods and services and plays a secondary role. Even for non-English speakers the term will be understood due to is basic nature and wide-spread use in commerce in general or indeed due to its similarity with other linguistic equivalents, qualité (French), Qualität (German). However, it is true that in certain languages such as Polish the equivalent is far-removed (jakość) thus it cannot be dismissed that it will not be understood, which would render it distinctive for those consumers.

Finally, as to the figurative elements in the signs, in the earlier mark it may be taken as a ‘Q’ in a circle which would be understood as a reference to ‘quality’ or as a device which could be perceived in a number of ways (aerial view of a cup, an ‘on’ sign). In the contested sign the opponent has submitted that the elements may be seen as the letters ‘QU’ and the Opposition Division concurs that this perception cannot be ruled out which would also lead to a similarity with the earlier mark, as it may be connected to its figurative device or indeed to the notion of ‘Quality’ as is the trend on the market whereby certain sectors use a ‘Q’ as a certification of quality (such as in the hotel industry).

As to the question of dominance, the verbal components in the earlier mark are the most dominant whilst in the contested mark the figurative components are more visually outstanding.

Visually, the signs coincide in ‘espresso’ and in the figurative ‘Q’ whilst they differ in their remaining elements. Weighing up the previous considerations concerning the distinctive issues in the signs, it should also be considered that verbal components carry more weight than figurative elements. Thus on the whole, the signs are found, at most, visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincide in the syllables found in ‘espresso’ present identically in both signs and differ in the sounds deriving from the earlier mark’s first word ‘quality’. Given their figurative nature, it is unlikely that the other elements in the contested sign will be referred to even if perceived as letters. However, in view of the largely descriptive nature of ‘espresso’ the signs are at most similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Given the distinctive issues surrounding ‘espresso’ but taking into taken the previously set out assertions, a low degree of conceptual similarity can be found. 

As seen above, the signs are similar to a low degree.

2. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The applicant argues that the opponent wrongly assumes that consumers will perceive the figurative elements of its mark as ‘QU’ and as an abbreviation of the opponent’s ‘quality’, as found in the mark. The applicant submits however that these letters could be connected to a variety of words beginning with QU and it submits a lengthy list of possibilities such as ‘Quick’, ‘Queen’ or ‘Quite’. The applicant further asserts that the goods and services at issue show no resemblance, targeting a different public, being distributed through different channels and serving different needs.

Firstly, the fact that the goods and services may be dissimilar is not a pertinent argument since one of the purposes of Article 8(5) EUTMR is to protect reputed marks in opposition against marks that are similar, yet protect dissimilar goods and services.

Secondly, when looking at the goods for which reputation has been proven and the goods and services from the contested mark, there are some relevant connections. All the goods in class 30 are products that are coffee, based on or include coffee or indeed are items that are closely connected as they are used in conjunction with each other. The services revolve around the treatment and provision of food and drink which clearly also include coffee. The opponent’s goods for which reputation has been found are goods that grind coffee and prepare it to be drunk as a beverage and the market reality shows that there are many coffee producers that also market such machines and vice versa. There is a certain connection between the goods and services and, contrary to the applicant’s assertions, even if the opponent’s goods were only intended for a more specialised public there is still an overlap with the public targeted by the contested goods and services.

However, as to the signs, the similarities are low, even in the scenario where the figurative devices are perceived as ‘QU’. Firstly, ‘espresso’ is non-distinctive for all the coffee-related goods and services and will not be seen as performing a trade mark function but rather as a descriptive indication of the goods and services. Secondly, even if there is a certain visual resemblance in the figurative devices of the signs for some consumers, whether seen as a ‘Q’ in the sense of quality or as an ‘on’ sign this is again a coincidence in a weak element for reasons previously described.  

Aside from the distinctiveness of the elements, the earlier mark as a whole has a lower than average inherent distinctive character for a substantial part of the consumers in the relevant territory due to the combination of terms and their meaning, as described previously. Even if there are some speakers who do not understand ‘quality’, raising the distinctive character of the mark as a whole to average, this does not lead to the marks being more similar since this element has no counterpart in the contested mark anyway.

It is true that the earlier mark has a certain reputation but it cannot be qualified as being such a strong reputation that the contested mark would be brought to mind, particularly considering that ‘espresso’ is descriptive.

Judgment of 06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 26, found that ‘as regards the degree of similarity between the signs at issue, the more similar they are, the more likely it is that the later trade mark will bring the earlier trade mark with a reputation to the mind of the relevant public (see, by analogy, Intel Corporation, paragraph 19 above, §44). The same judgment at § 27 also reasons that ‘the stronger the distinctive character of the earlier mark, the more likely it is that, confronted with a later identical or similar mark, the relevant public will associate it with that earlier mark. Accordingly, for the purposes of assessing whether there is a link between the marks at issue, the degree of the earlier mark’s distinctive character must be taken into consideration. In that regard, the ability of a trade mark to identify the goods or services for which it is registered and used as coming from the proprietor of that mark and, therefore, its distinctive character are all the stronger if that mark is unique (see, by analogy, Intel Corporation, § 19 and 54 to 56).

Therefore, in view of the feeble distinctive character of the elements in question, the similarities between the contested trade mark and the earlier trade mark are unlikely to bring the earlier trade mark to the mind of the average consumer.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

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.

For the purposes of these grounds, the Opposition Division will only take into account European trade mark registration No 4 900 651 and No 6 397 384. The other registered marks include the same goods and services to these marks so their omission does not affect this comparison.

2. The goods and services

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

European trade mark registration No 4 900 651

Class 7: Coffee grinders, other than hand operated, water-heaters (parts of machines); filters (machine parts); electric fruit presses (juice extractors) for household purposes; steam engines.

Class 11: Electric coffee pots; water heaters; water heating installations; coffee roasters; coffee roasters; mixer taps for water or steam pipes.

Class 21: Non-electric coffee percolators, non-electric coffee filters; coffee grinders (hand-operated); coffeepots, non-electric, not of precious metal; whisks (non-electric); non-electric fruit presses (juice extractors) for household purposes.

European trade mark registrations No 6 397 384

Class 30: Coffee, tea, artificial coffee, coffee flavourings, coffee-based beverages, unroasted coffee; cocoa, chocolate, chocolate-based beverages.

Class 35: Commercial retailing of coffee, tea, cocoa and electric household appliances, in particular electric coffee makers and coffee grinders; sale via global telecommunications networks of coffee, tea, cocoa and electric household appliances, in particular coffee makers and coffee grinders.

Class 39: Distribution, storage and transport of goods derived from coffee, tea and cocoa and electric household appliances, in particular electric coffee makers and coffee grinders.

The contested goods and services are the following:

Class 30:  Coffee; Ice, Sugars, natural sweeteners, sweet coatings and fillings, bee products; Baked goods, confectionery, chocolate and desserts.

Class 40: Food and beverage treatment.

Class 43: Providing food and drink.

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.

Class 30

The contested coffee and chocolate are identically designated in earlier marks, No 6 397 384 and No 6 397 145

The contested sweet coatings and fillings, baked goods, confectionery and desserts are similar to chocolate from the same aforementioned earlier rights. Indeed all of these goods are foodstuffs designed for a sweet tooth, or are least include such goods. As such they have the same purpose and generally can be found in the same distribution channels targeting the same consumer. In view of their interchangeable nature, the goods are also in competition.

The remaining contested goods in this class are however, dissimilar to all the goods and services from the earlier marks. These goods are made up of frozen water, ice creams, frozen yogurts and sorbets; sweeteners, bee products in general. The fact that some of these goods are sometimes eaten or served with a beverage for example is not sufficient to find similarity. It is only when there is an interdependent relationship between the goods that complementarity can be found, which is not the case here. Further, even if ice creams, yogurts and sorbets are eaten as desserts that does not lead to an automatic finding of similarity with any of the goods from the earlier mark and particularly chocolate. Indeed the main ingredient in these contested goods, is either dairy based or frozen water based (sorbets) but not any of the goods from the earlier right. Even if the contested goods may have chocolate or coffee as an ingredient or flavour, it is not the main ingredient and Ingredients used for the preparation of foodstuffs are a subcategory of raw materials and treated in the same way as raw materials in general. Consequently, the mere fact that one ingredient is needed for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar, even though they all fall under the general category of foodstuffs (judgment of 26/10/2011, T-72/10, Naty’s, EU:T:2011:635, § 35-36).

The other goods protected by the earlier marks are made up of equipment used in the kitchen or home and none of the goods from the earlier rights coincide in any relevant points of contact; their nature and purpose differs as do their producers, consumers and distribution channels. Furthermore they do not share a complementary nature nor are they in competition with one another. The same reasoning and conclusion is equally applicable to the services covered by the earlier rights which show even more disparities.

Contested services in Class 40

The contested food and beverage treatment in Class 40 refers to the processing or transformation of substances and includes flour milling, food and drink preservations, freezing of food, fruit crushing amongst other transformation processes. These services do not fulfil any of the factors already listed above when comparing with all the goods and services from the earlier rights. These services are aimed at industry and are technical services that need specialist know-how. Even if storage and distribution services may imply the preservation of foodstuffs, the same entity is not responsible since they merely take reception of the goods for their subsequent storage or distribution for example. Reference is made to the previous assertions as concerns an absence of any relevant points of contact, leading to dissimilarity.  

Contested services in Class 43

The contested services are similar to a low degree to coffee as designated by the earlier rights. The provision of food and drinks in Class 43 mainly covers services of a restaurant or similar services, such as catering, cafeterias and snack bars. These services are intended to serve food and drinks directly for consumption. The mere fact that food and drinks are consumed in a restaurant is not sufficient reason to find similarity between them (judgment of 09/03/2005, T-33/03, Hai, EU:T:2005:89, § 45 and decision of 20/10/2011, R 1976/2010-4, THAI SPA / SPA et al., § 24-26).  Nevertheless, in certain situations these goods and services can be complementary (judgments of 17/03/2015, T-611/11, Manea Spa, EU:T:2015:152, § 52; 15/02/2011, T-213/09, Yorma’s, EU:T:2011:37, § 46). Even though food and/or drinks are essential to the services of restaurants, bars, cafeterias, etc. does not in itself lead consumers to think that responsibility for the production of those goods and provision of those services lies with the same undertaking (e.g. salt in restaurants). On the other hand, consumers may think that responsibility lies with the same undertaking if the market reality is that the provision of food and drinks and the manufacture of such goods are commonly offered by the same undertaking under the same trade mark (e.g. coffee in their coffee shops, ice cream in their ice cream parlours, beer in pubs).

For the sake of completeness, as to the goods and services found dissimilar, the opponent argued that there is a ‘close-knit connection as there is an element of competition, given that ‘coffee machines are invariably present in the foodstuffs, beverages and hospitality services’. This assertion however does not hold true and the issue of a ‘connection’, whilst pertinent to Article 8(5) EUTMR (as seen previously) is not sufficient under Article 8(1)(b) EUTMR which needs some similarity based on relevant factors such as nature, purpose, distribution channels and producers. Firstly, a complementary relationship is marked via an interdependent relationship whereby one good/service is indispensable or important for the other and this does not apply to any of the goods and services found dissimilar. Secondly, as reasoned above the mere fact that the goods may be foodstuffs for example is neither indicative of similarity, as also set out above. Finally, the fact that a coffee machine is used for example in a restaurant does not lead to any degree of similarity with any food/drink related good or services. In the absence of any other arguments or evidence, the opponent’s arguments are therefore set aside.

3. 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 and similar to different degrees are directed at the public at large displaying an average degree of attention.

4. Comparison of signs

The marks used for the comparison of goods and services are identical to that already compared under Article 8(5) EUTMR. Those findings are equally valid here and reference is made to the previous Comparison of signs.

5. Distinctiveness of the earlier marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

As seen under Article 8(5) EUTMR, the opponent claimed reputation for all goods and services but was only successful for part of the goods and services, namely, coffee grinders, other than hand operated in Class 7;electric coffee pots in Class 11 and non-electric coffee percolators, non-electric coffee filters; coffee grinders (hand-operated); coffeepots, non-electric, not of precious metal in Class 21.

The claim therefore does not concern the opponent’s goods which have been found identical and similar (to varying degrees) to those of the contested goods. For the claim to be valid in this regard, the goods and services should have at least some similarity. However, when comparing the opponent’s goods for which the claim is accepted with those of the relevant goods and services there are no relevant points of contact. Indeed, the fact that some of the opponent’s goods in Classes 7, 11 and 21 may be used to make coffee for example does not suffice since such goods are usually made available via different channels and emanate from different producers. Indeed a comparison of the goods and services in dispute leads to a finding of dissimilarity since there is no coincidence in nature or purpose. The goods are not in competition nor complementary and in short they are dissimilar.

 

In view of the foregoing, the assessment will proceed on the basis of the inherent distinctiveness of the earlier mark. Reverting to what has been set out extensively in the section on Article 8(5) EUTMR (particularly in the comparison of signs and the assessment of the link), the distinctive character of the mark has to be seen as low for a substantial part of the relevant public. However, where ‘Quality’ is not understood its distinctiveness is average.

6. Global assessment, other arguments and conclusion

The goods were found identical, similar to varying degrees and dissimilar and are aimed at the public large displaying an average degree of attention. The signs show low similarities due to the coincidence in ‘espresso’ as well as a certain likeness in their figurative components, for part of the public. The earlier mark has a low to average degree of distinctive character as a whole, depending on the understanding of ‘Quality’.

Setting aside the dissimilar goods and services, those remaining, namely coffee, chocolate, sweet coatings and fillings, baked goods, confectionery and desserts (Class 30) and providing food and drink in Class 43 are all goods and services that can be strongly associated with ‘espresso’ or for which the term is directly descriptive and reference is made to previous arguments made in Article 8(5) EUTMR on the meaning and association.

Even considering the principle of interdependence, whereby a lesser degree of similarity between goods and 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). The identity of some of the goods is not sufficient to compensate the low degree of similarity between the signs in the absence of other factors that could help tip the balance, such as an enhanced distinctive character for the relevant goods.

Case-law has repeatedly reiterated that descriptive terms do not enable the commercial origin of trade marks to be identified and even average consumers are reasonable attentive and circumspect and will distinguish the signs and clearly see they do not derive from the same or economically linked undertakings. The opponent’s argument that the signs share a similar structure does not hold true for the reasons set out in the comparison of signs and indeed the similarities are low.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

The opponent has also based its opposition on the other marks, set out at the beginning of this decision. The goods and services they protect are included in those of the marks used for the purposes of the above comparison and as such the outcome can not be more favourable.

This is equally applicable to the well known marks, which also cover the same goods and services, indeed well known marks can only be protected against identical or similar goods and services if there is a likelihood of confusion pursuant to Article 8(1)(b) EUTMR, to which Article 8(2)(c) EUTMR refers for determining the scope of protection. Therefore all of these marks can be set aside since examining them would not lead to a different outcome.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Carlos MATEO PÉREZ

Vanessa PAGE

Lucinda CARNEY

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.