Date of decision: 16.01.18

Reg 207/2009 

Application

  • services for providing drinks (43) 

  • ground and whole bean coffee, coffee and expresso beverages and beverages made with a base of coffee and/or espresso, ready to drink coffee (30)
  • cafes, cafeterias, snack bars and coffee bars; services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption (42)

  • ground and whole bean coffee, coffee, expresso beverages, and beverages made with a base of coffee and/or espresso, baked goods, pastries, ready-to-drink coffee (30)
  • café, cafeteria, snack bar, coffee bar, coffee house (43)

Commentary

The GC annulled an appeal against the BoA's decision to reject the opposition pursuant to Arts 8(1)(b) and 8(5).

The BoA erred in ruling out any possibility of similarity between the marks on the basis that the similarities between the marks were not such as to make them even remotely similar. The marks had the same general appearance and structure, shared the word "coffee", and, as the mark applied for did not refer to any colour in particular, it extended to cover all colour combinations including those in the earlier marks. The BoA also erred in ruling out any possibility of phonetic or conceptual similarity.  

As such, the BoA did not carry out an overall assessment of the likelihood of confusion and its decision was therefore annulled in that regard.

In light of the BoA's finding that there was no similarity between the marks, the BoA did not assess whether the mark applied for would take unfair advantage of the reputation attached to the earlier mark and in this respect the BoA also erred.  

The BoA's decision annulled in as for as it found that it was apparent from the dissimilarity of the signs at issue that the conditions for the application of Arts 8(1)(b) and (5) were not satisfied.