In 2014 the CAFFÈ NERO Group Ltd filed two EU trade mark applications for the word mark CAFFÈ NERO and a figurative mark for the words CAFFÈ NERO on a blue background. The applications cover goods and services including tea and coffee and confectionery goods in class 30 and the retail services associated with the sale of those goods in class 35.
The EUIPO ( then OHIM) objected to the registration of both marks on the basis of the grounds for refusal set out in Article 7(1)(b), (c) and (g) of Regulation No 207/2009. These grounds are that the applied for mark is devoid of distinctive character, are descriptive of the nature of the goods or services, or may serve to mislead the public.
The applicant appealed the decision and the Board of Appeal agreed with the EUIPO that the marks applied for will be perceived as a direct and obvious reference to the nature of the goods and services. The word elements are both terms commonly used in Italy 'caffè', which means 'coffee' and 'nero', which means 'black'. CAFFÈ NERO will be understood as an indication that the goods are or contain black coffee or taste like black coffee.
The applicant argued that "CAFFÈ NERO" has no meaning in Italian or in the Italian coffee culture. The applicant claimed that when coffee is ordered it is referred to by using a specific name rather than its colour. The applicant also argued that they already own UK and CTM registrations for the mark CAFFÈ NERO which include some of the same goods and services as those covered by the contested mark.
The Board of Appeal dismissed the appeal also took the view that some of the goods covered did not actually contain black coffee and consumers would assume that they did. Therefore, the mark should be refused for those goods in respect of Article 7(1)(g) which states that registration of a trade mark is to be refused for trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.
The applicant's argument that the figurative element was capable of conveying an immediate and lasting impression which members of the relevant public may retain in a way that makes it possible for them to distinguish the goods of the applicant was also rejected.
The EU General Court, in two separate decisions, has agreed with the Board of Appeal that both marks are non-distinctive, descriptive and of such a nature as to mislead the public in relation to some goods and services.in: EU/International, Trade Marks