Background
According to the Examiner, allowing the trade mark to be registered for Classes 30, 33, and 35 would create a “sufficiently serious risk” of deception with regard to their nature, quality, or subject matter by suggesting that they are or contain coffee. The Examiner further supported this by pointing to the illustration in between the two words and stating that the cup with hot coffee reinforced this deception.
On 8 August 2024, the applicant appealed to the BoA, seeking annulment of the decision, on inter alia the following grounds:
- Merely a likelihood of deception is not sufficient to refuse a trade mark registration application, as it presupposes that non-deceptive uses do not exist.
- The existence of an element in a sign that might per se convey a deceptive message is not sufficient to conclude that the sign itself has a deceptive meaning, as the decisive factor should be the perception of the sign as a whole.
- The term ‘coffee’ is not deceptive for tea, artificial coffee, cocoa, or beverages containing cocoa.
- The term ‘Einstein Kaffee’ constitutes a “conceptual unit” with ‘Einstein’ being distinctive for the relevant goods and services, thereby ruling out deception on the part of consumers.
- The illustration of a cup found in the figurative mark does not necessarily suggest that it is filled with coffee.
BoA Decision
The BoA dismissed the appeal (R1596/2024-5).The BoA, first of all, emphasized that, according to established case law, the applicability of Article 7(1)(g) EUTMR requires demonstrating “actual deceit or misleading of relevant consumers” or “a sufficiently serious risk that relevant consumers will be deceived”, taking into account the background of goods and services, as well as the understandings of consumers. Pursuant to Article 7(2) EUTMR, the BoA identified the relevant consumers as being the German-speaking public of the Union, namely German and Austrian consumers.
Starting with the deceptiveness assessment of the illustration of a steaming cup with a dark content, the BoA, despite acknowledging that the cup could be filled with any hot beverage, held that the immediate appearance of the word ‘KAFFEE’ next to the cup would lead consumers to perceive the hot drink in the cup as coffee. Moreover, the cup chosen by Einstein Marketing was considered to have a “typical shape of coffee cups”. Thus, the BoA found that the relevant public would take the sign, in its entirety, to refer to coffee produced by a person or an entity named Einstein.
Next, the BoA considered the places and the circumstances in which coffee, tea, cocoa, and artificial coffee products are sold. It stated that all these products are sold either on the same shelves as coffee or on adjacent ones, leading the average consumer – whose level of attention in respect of these goods is generally low – to briefly glance at the details on the packages without carefully analysing the descriptions or information provided, and to make a quick decision whether to purchase them. Since the sign “EINSTEIN KAFFEE” is perceived by the relevant public as referring to products associated with coffee, and since tea, cocoa, and artificial coffee products are sold on the same shelves as coffee, the BoA considered it highly likely that a consumer might quickly grab a package of “EINSTEIN KAFFEE”, expecting it to contain coffee beans, only to discover they had purchased tea, cocoa, or artificial coffee instead.
Accordingly, the BoA found that the Examiner was right in refusing to register the relevant sign due to the sign constituting a serious risk of deception when used on or for goods and services in Classes 30, 33, and 35. As “Einstein Kaffee” does not constitute a conceptual unit which has a meaning other than the combination of the words ‘Einstein’ and ‘Kaffee’, the BoA was able to separate these two words and conclude that the term ‘Kaffee’ (i.e., coffee) in the contested sign would be taken as a descriptive element misleadingly referring to the content or nature of the products in Classes 30, 33, and 35.
The BoA also rejected the applicant’s argument that, since the relevant sign can be used in various ways that do not cause misleading interpretations, it should not be considered invalid under Article 7(1)(g) EUTMR. The BoA made it clear that: “[i]f, following an obvious interpretation of the sign as a whole, there is at least a sufficiently serious risk of deception, it is irrelevant that there are also other interpretations according to which the sign could not be perceived as misleading”.
Comment
As a coffee aficionado and a tea lover, this Kat agrees that ‘coffee’ is misleading in respect of ‘tea’ as she would be furious to realise that she had bought a package of tea, when expecting to brew a strong morning coffee. It would probably be even worse if this mistake was made between coffee and its decaffeinated substitute to serve as a nightcap, artificial coffee.It is apparent that trade mark law – as demonstrated by the BoA (see paras 10, 17-18) – safeguards the wellbeing of consumers by disincentivizing the provision of misleading information as to the nature, content, quality, or essential characteristics of products in the market. Therefore, allowing a sign that is perceived by the average consumer as referring to products and services related to coffee to be used on packages of tea, or even decaffeinated products such as cocoa and artificial coffee, would not only be contrary to this safeguarding principle, but also endanger the reliability of brands, businesses, or even marketplaces.

I wonder if 'Einstein Café' would have stood more of a chance of being registered, with 'café' being more associated with a place rather than a drink. I could well imaging a café serving tea and also selling its special blend.
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