Diversity of goods: EUIPO rejects Galbusera's opposition to the trade mark "Antico Caffè Tre Marie"

On 24 March 2023, the EUIPO Opposition Division rejected the opposition filed by Galbusera S.p.A. against the EU word mark application "ANTICO CAFFÈ TRE MARIE". The opposition was based on the EU word mark registration 'TRE MARIE' and the below figurative mark:

The opponent based its claim on Article 8(1)(b) RMUE, according to which a likelihood of confusion exists if the public is likely to believe that the goods or services in question, when bearing the contested marks, come from the same or an economically-linked entity.

As is well known, there are several interdependent factors that may determine the likelihood of confusion, including: the similarity of the signs, goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public. In its decision, the Opposition Division first analysed the similarity of the goods, all included in class 30: on the one hand, the opponent’s goods, i.e. biscuits, leavened goods, baked goods and cereal preparations and, on the other hand, the contested goods, i.e. coffee and coffee substitutes, beverages, oils, coffee pods and coffee blends.

The Division then pointed out that, according to Article 33(7) EUTMR, goods and services are not considered similar or different from each other merely because they are in the same or different classes. Instead, relevant factors for the comparison of goods or services include, in particular, their actual nature and purpose, their distribution channels and outlets, their manufacturers, their method of use, their being complementary or in competition with each other.

In consideration of this, the Opposition Division concluded that the only element in common between the opponent’s goods and those of the applicant is the fact that they are both edible goods, hence they should be considered different. In particular, in rejecting the corresponding grounds of the opposition, the Division noted that:

(i) these goods do not even share distribution channels, because although it is true that they may be sold in the same place (supermarket), they will still be placed in different sections;

(ii) it is not usual that companies producing coffee also produce sweets and vice versa, whilst the relevant public will perceive different products as having a common commercial source only when most of the producers or distributors of the products in question are the same;

(iii) the goods are neither complementary nor in competition with each other;

(iv) even if the earlier marks were highly distinctive, the final judgment would not change, since the difference between the goods prevails over the highly distinctive character of the earlier marks.

For all these reasons, the Opposition Division rejected Galbusera's opposition. The parties will now have two months to appeal the decision.