No go for Nero logo: GC rejects Caffè Nero appeal

Rejecting appeals against two decisions from the European Union Intellectual Property Office (EUIPO) Board of Appeal to maintain the objections from the EUIPO in the first instance, the GC agreed that the marks were both descriptive of the majority of the class 30 and 35 goods and services relating to coffee. The court found that the relevant Italian speaking public would understand the expression "Caffè Nero" as meaning black coffee ie, a coffee sold without cream, milk or sugar. Further, the GC found the marks to be misleading in relation to other goods applied for, such as tea.

Descriptive in a language of the EU

Caffè Nero had argued that coffee is, in fact, usually referred to by using a specific name rather than by reference to its colour; however, the GC said the two elements "Cafè" and "Nero" were commonly used in Italian, one of the languages of the EU. As a whole, the combination of those two terms will thus be perceived by a proportion of public concerned as meaning "black coffee". The GC said: "It is a matter of common knowledge that in many member states the literal translation into their own language of the expression "Caffè Nero" will be understood by the general public as referring to coffee served as a beverage without any additions". It was deemed irrelevant that there were other terms that might be used more frequently than "Caffè Nero" to refer to coffee-based beverages.

The GC therefore refused to register the marks on the basis of Article 7(1)(b) and (c) EUTMR for the majority of the goods and services that were perceived to either contain black coffee or for which it was possible that they could taste like black coffee. This included not just coffee but also biscuits, cookies, chocolate bars, muffins, pies and other goods in class 30, as well as retail store services in class 35 relating to coffee and other coffee related goods.

A misleading mark

In addition, for some of the goods at issue (namely those corresponding to the following description: "tea, cocoa, coffee substitutes; herb tea; tea beverages; cocoa and cocoa-based preparations; cocoa beverages; preparations and mixes for making the aforesaid goods; powdered chocolate"), the GC held that consumers were likely to believe that those goods were, or contained, black coffee, even if, in actual fact, this was not the case.

The Board of Appeal had earlier considered that these goods were sold in packaging that is quite similar to that used for coffee and consumers "may often have to buy those goods rather hastily, without necessarily taking the time to analyse the wording of the packaging". The GC agreed and concluded that once it is established that there is actual deceit or a sufficiently serious risk that consumers will be deceived, it becomes irrelevant that the mark applied for might also be perceived in a way that is not misleading. Accordingly, the appeal was refused and the marks were also rejected for these goods on the basis of Article 7(1)(g) EUTMR as they could mislead the public.

In short

This case highlights the fact that if a mark is descriptive in any one of the languages of the EU, it is likely to be objected to on the basis that it is not a registrable mark for at least a proportion of the relevant public in the EU. It is also a reminder that, if a mark is applied to goods which are different to those described, it is possible that the mark could be perceived as deceptive or misleading to consumers and it could also be refused on that basis.

Case details at a glance

Jurisdiction: European Union
Decision level: General Court
Parties: Caffè Nero Group Ltd (applicant) v EUIPO (defendant)
Citations: T-29/16 & T-37/16
Date: 27 October 2016Full decisions: http://dycip.com/t-2916 & http://dycip.com/t-3716