Trademark trouble continues for Caffe Nero in latest EU ruling

The coffee chain has lost its latest appeal against the rejection of its ‘Caffe Nero’ brand as an EU trade mark.

In rejecting Caffe Nero’s latest appeal, the EU General Court has agreed with the EU Intellectual Property Office (EUIPO)’s decision to reject an application to register ‘Caffe Nero’ as an EU trademark. The figurative mark of ‘Caffe Nero’ on a blue background which can be seen on most main high streets in the UK was also rejected.

The EUIPO challenged the registration of both applications on the grounds that the mark is devoid of distinctive character, it may mislead the public and it is descriptive of the nature of the goods or services. The company appealed the decision to the Board of Appeal, who upheld the original decision of the EUIPO, i.e. that the marks would be perceived as a ‘direct and obvious’ reference to the nature of the coffee served.

The rejection noted that the words used in the mark – ‘caffe’ which means coffee and ‘nero’ which means black – are both commonly used in Italian in reference to coffee. However, the coffee chain argued ‘Caffe Nero’ in fact has no meaning in Italian or in the Italian coffee culture, since – they claimed – when a consumer orders a coffee they do so by referring to a specific name, such as latte or cappuccino, rather than the colour of the beverage, so wouldn’t commonly use the words ‘caffe nero’ when ordering coffee.

Caffe Nero later appealed the decision to the EU General Court, who upheld the decision of the Board of Appeal on 27th October 2016. The court stated there was a risk of ‘actual deceit or a sufficiently serious risk that the consumer will be deceived’.

The court added: ‘the essential function of a trademark is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin.’

The important lesson to be learnt from the decision is that any application to register an EU trademark which is prima facie descriptive in nature under any one of the 24 official European languages is likely to be rejected by the EUIPO. Companies should be conscious of this when naming their company and considering their filing strategy accordingly.