The General Court ruled in cases T-37/10 and T-29/16 where an Italian company Caffe Nero Group ltd tried to register the following EU trademark in Class 30 ‘tea, coffee, cocoa; biscuits; cookies; bread, pastry and confectionery, chocolate bars, chocolate covered coffee beans, etc’ and related retails services in Class 35:
The EUIPO refused to register this mark on absolute grounds, the consumer in Italy can perceive this expression as descriptive, namely that the coffee is without any additions such as sugar, milk or so on.
The decision was appealed by the company with the argument that nobody in Italy uses this term for such kind of coffee in practice.
According to the court, however, even in case that this is not typical expression for ordering such drink, it clearly evokes a direct meaning in consumer mind about the goods characteristics.
Moreover, for some of the goods such as ‘tea, cocoa, coffee substitutes; herb tea; tea beverages; cocoa and cocoa-based preparations; cocoa beverages; preparations and mixes for making the aforesaid goods; powdered chocolate’, the consumers can be mislead to think that they content coffee.
Source: Marques Class 46.