Click here to view the image.

Would the average Italian consumer interpret ‘‘caffé nero’‘ to mean ‘‘black coffee’‘? The General Court, in an appeal brought by Caffé Nero Group, thought they would.

Applications for the word CAFFÉ NERO and the logo above had been rejected by the EUIPO on the basis of their descriptive meaning, their lack of distinctive character and their deceptiveness:

The court agreed that both the word and logo would create an obvious and direct connection with the nature of the goods, regardless of the fact that ‘‘caffé nero’‘ might not be in common use for coffee in Italy. The Italian coffee drinker may be a sophisticated and passionate consumer, unused to hearing such descriptions, but they would still assume the words refer to a cup of coffee without milk or sugar.

Having concluded that the marks carried a descriptive meaning, the court found that rejection under Article 7(1)(c) EUTMR – a lack of distinctive character – naturally followed.

Registration on the grounds of acquired distinctiveness was not argued by Caffé Nero.

The court also agreed that ‘‘black coffee’‘ would deceive consumers on purchase of the non-black coffee goods covered in the applications, 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. The fact that these goods could be altered to include ‘‘black coffee flavours’‘ etc., such that they would not be deceiving, was not relevant. The case law makes clear that there need only be a sufficiently serious risk of deception, whether non-deception is possible or not.

Lastly, Caffé Nero argued that the EUIPO’s conduct was contrary to the principles of equal treatment and sound administration. This on the basis that its EUTM registrations for CAFFÉ NERO and its variants having been previously accepted by the EUIPO. This was, predictably, rejected. The court, referring to the supremacy of regulation over administrative decision-making, found that sound reasoning had been used by the EUIPO when they decided that the applications fell foul of the regulation and pointing out that the Board of Appeal was not beholden to decisions of the EU registry office or previous Board of Appeal practice.

Cases T-37/10 and T-29/16