By two separate decisions rendered on 26 October 2016, the EU General Court rejected applications to register as EU trade marks the word sign CAFFÈ NERO and a figurative sign containing the same words.
Registration was sought for classes 30 and 35, which relate to tea, coffees, biscuits and confectionery, and retail store services and retail services connected with coffee respectively. The applications were rejected.
The EU General Court agreed with the Board of Appeal that the “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, and that that is how an Italian-speaking public will understand the expression ‘caffè nero’.”
Caffè Nero argued that the term “caffè nero” has no meaning either in Italian or in Italian coffee culture. Coffee is, in fact, referred to by using a specific name, not by reference to its colour.
The EU General court rejected the argument and stated that the public concerned would immediately perceive, without further reflection, that the goods are or contain black coffee or taste like that, and that the services relate to the sale and promotion of those goods.
It was thus decided that the marks applied for would be perceived as a direct and obvious reference to the nature of the goods and of the services relating to the goods. The court ruled that the marks were devoid of any distinctive character and added that the public may be even deceived into thinking they relate only to black coffee even if, in actual fact, this was not the case.
When applying to the EUIPO applicants must consider carefully how a mark is likely to be understood in the language of a member state and avoid words that are merely descriptive and are not distinctive.
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