Black day for Caffè Nero
The Court couldn’t see past the literal in deciding this case, says Charlie Bond. T-29/16, Caffè Nero Group Ltd v EUIPO, CJEU, 27th October 2016.
T-29/16, Caffè Nero Group Ltd v EUIPO, CJEU, 27th October 2016
Key points
- To register a mark that is considered descriptive in a European language, there must be evidence of acquired distinctiveness in a substantial part of the EU, including in the territory where the language in use is spoken
- Where words are incorporated into a figurative mark, the issue of descriptiveness will remain unless the figurative elements make an immediate and lasting impression on the consumer
Caffè Nero has failed in its attempt to register a logo as an EU trade mark (EUTM). After the company’s initial appeal against a decision of EUIPO failed, the General Court (GC) followed suit and rejected a further appeal on the grounds that the public would be deceived into thinking that the mark solely relates to black coffee.
Case history
In November 2014, Caffè Nero applied to register the EUTM in, among others, classes 30 and 35 (which relate to goods including tea, coffee and confectionery, as well as retail and online shopping services related to these goods). In March 2015, the examiner rejected the application on the basis that the mark was devoid of distinctive character and purely descriptive, and would deceive the public.
In May 2015, Caffè Nero appealed the decision, and, in November 2015, the Board of Appeal (BoA) rejected the appeal on the basis that the public would perceive the words Caffè Nero to mean “black coffee”, and the mark therefore constituted a direct and obvious reference to the nature of the goods and services in question (ie that they are or contain black coffee). It was also found that the mark had no acquired distinctiveness and consumers were likely to believe the relevant goods contained black coffee, even if they did not.
Caffè Nero made a further appeal, which the GC dismissed in its entirety and instead supported the findings of the BoA that consumers would interpret Caffè Nero as referring to black coffee, and would therefore assume goods purchased bearing this brand were or contained black coffee.
Appeal
Caffè Nero appealed to the GC, which ruled:
- The BoA was correct in finding that the mark was descriptive of the goods and services. The BoA found that, as the mark incorporates two Italian words, the target public for the purpose of assessing the absolute grounds for refusal is Italian speaking. Caffè Nero did not challenge this point, and so the GC proceeded on the same basis
- The GC found that both words were commonly used in Italian: caffé, meaning coffee, and nero, meaning black. Therefore, “according to Italian grammar and syntax, the combination of those two terms will thus be perceived by the public concerned as meaning ‘black coffee’.”
- Caffè Nero argued that these words in combination have no meaning in Italian or in Italian coffee culture, where coffee is referred to using specific names. The GC dismissed this argument and instead found that, although other terms may be used to refer to black coffee in Italy, it cannot be disputed that the words “caffè nero” would also be interpreted as referring to black coffee.
- Caffè Nero also sought to argue that the BoA failed to give sufficient weight to the figurative elements of the sign. The GC dismissed this argument and supported the BoA’s finding that the figurative elements of the mark would not make an immediate and lasting impression on the public, meaning the mark lacked distinctive character.
- The BoA was correct in finding that the mark was deceptive to consumers. The BoA found that consumers would be deceived by the mark and think that Caffè Nero’s goods were or contained black coffee, even if this were not the case. It based this finding on the fact that Caffè Nero sells all of its products in similar packaging, and people often buy them in haste, so they would not take the time to analyse the wording on the packaging, instead assuming they are or contain coffee.
- The GC also dismissed Caffè Nero’s argument that, where the mark is capable of being used in a non-deceptive manner, it cannot be rejected on the absolute ground that it deceives the consumer. In making this decision, the GC said that registering a mark that could be in any way deceptive would undermine the essential function of a trade mark, which is “to guarantee the identity of origin of the marked goods or services to the consumer … by enabling him, without any possibility of confusion, to distinguish the goods or services from others”.
The GC therefore dismissed the appeal in its entirety.
Once again, the GC has made clear that marks that may be considered descriptive in one European language will face an uphill struggle in securing protection. To succeed, they must be supported by evidence of acquired distinctiveness in a substantial part of the EU, including in the territory in which the language in use is spoken.
Charlie Bond is an Associate at Gowling WLG
Kate Swaine, a Partner at Gowling WLG, co-authored this article.