Caffè Nero fails to have CAFFÈ NERO registered as an EU trade mark

The CJEU General Court has rejected an appeal from Caffè Nero to register both the word mark CAFFÈ NERO and logo. On the basis that the proposed mark translates as black coffee in Italian, the court considered the trade mark descriptive for coffee related products and that the public may misunderstand other goods labelled with the mark (such as tea or chocolate) to contain black coffee. The case demonstrates the challenges faced in trying to protect descriptive marks – and the need, in responding to a refusal, to try to forestall objections based on matters not formally in evidence but well-known to the Boards of Appeal.

Background

Caffè Nero’s initial 2014 applications to register the CAFFÈ NERO word mark and logo as an EUTM were rejected by the EUIPO.  The applications covered classes 30 and 35 including (among other goods and services) tea, coffee, confectionary, biscuits and cocoa.  The Board of Appeal confirmed the decision in November 2015.

The EUIPO Board of Appeal held that the trade mark consisted of two terms commonly used in Italian: “caffè”, meaning coffee, and “nero”, meaning black.  As a result, the Italian speaking public in particular would interpret this to mean “black coffee”, namely coffee served as a beverage without cream, milk or sugar.

Amongst other grounds, the applications were refused on the basis that the marks were descriptive in relation to the coffee based goods (article 7(1)(c)). The Board also based their refusal on article 7(1)(g) in that consumers were likely to believe that other goods covered by the marks contained black coffee and this would mislead the public.

Caffè Nero appealed this decision to the CJEU General Court.

The General Court decision

Caffè Nero argued that “black coffee” had no meaning either in Italian or in the Italian coffee culture.  In fact, coffee was referred to by using a specific name (such as “espresso” or “cappuccino”), not by reference to its colour. Caffè Nero also argued that the Board of Appeal’s finding was not supported by any evidence and was contrary to the evidence that had been presented.

The General Court rejected these arguments.  The court emphasised its ability to take into account evidence that was well-known, such as the fact that the Italian-speaking consumer would understand the expression to mean “black coffee”.  Caffè Nero’s evidence did not contradict the Board of Appeal’s assessment.  The Board was not in error to find that it was irrelevant that there are other terms which might be used more frequently than ‘”caffè nero” to refer to coffee-based beverages.

The General Court therefore dismissed the appeal in its entirety, agreeing with the Board of Appeal. Of key importance to the decision was the descriptiveness of the term CAFFÈ NERO to an Italian-speaking audience.

Take away points

This appeal demonstrates the difficulties presented in trying to protect a trade mark at EU level that can be translated to a known term in one of the EU languages.

The case is also a warning that the Board and the General Court can and will take into account facts not presented before them as the evidence, if in their minds they are well-known facts.