Caffè Nero Group Limited applied to register its house brand and style as European Union trade marks. The General Court has now issued a decision about the inherent registrability of the applications. Caffè Nero is a European style coffee house based in London. It was founded around 20 years ago and operates in excess of 700 coffee houses in various countries around the world including the UK, Ireland, Poland, Cyprus, Turkey, the UAE and the USA. The company applied to register marks for a range of beverage and confectionery products and related retail services.
The EUIPO refused the applications on the basis that Italian-speaking consumers would understand the term ‘caffe nero’ to mean ‘black coffee’. The Office, therefore, found that the marks applied for would be perceived as a direct and obvious descriptive reference to the nature of the goods and services of the applications.
Caffè Nero appealed, claiming that the term ‘caffe nero’ has no meaning either in Italian or in Italian coffee culture. Coffee is, in fact, referred to by using a specific name, not by reference to its colour.
The General Court rejected the arguments of Caffè Nero as none of the evidence filed showed that the marks were unusual or might have their own meaning. The Court stated that whilst the term ‘caffe nero’ may not be used by the Italian-speaking consumers or in Italian coffee culture, the consumers would, nevertheless, understand that it refers to a black coffee (without milk or cream). It was not considered relevant that other terms would be more frequently used to describe this beverage in Italian coffee culture.
This case is a further reminder, if one was needed, that if you apply to register a European Union Trade Mark that is prima facie descriptive in one of the languages of the EU, you are likely to receive an objection from the Office. In the absence of evidence of acquired distinctiveness in a substantial part of the European Union including in the country or countries where the language is spoken in which the mark is descriptive, securing an EU-wide registration may be difficult. In these circumstances, it may be advisable to consider alternative trade mark filing strategies.