CAFFE VERONA not deceptive for coffee goods not originating from Italy

Iceland

The Board of Appeal has issued a decision in a case involving the trademark CAFFE VERONA.

At issue in this case was whether:

  • the word mark CAFFE VERONA for "beverages made of coffee; coffee; coffee beans; ground coffee beans" in Class 30 of the Nice Classification had sufficiently distinctive character to be apt to distinguish the goods of the trademark owner from those of others, and therefore fulfil the conditions set forth in Article 13 of the Trademarks Act (45/1997); and
  • the mark was apt to confuse consumers with regard to the origin of the goods in the sense of Article 14, Paragraph 1, Item 2 of the act.

The Patent Office had refused to register the mark on the basis that it was descriptive of the goods and deceptive as to their origin.

The Board of Appeal overturned the decision, holding that the requirement that trademarks be distinctive is based on the fact that:

  • descriptive marks are not apt to distinguish the goods of the trademark owner from those of other parties; and
  • no one should obtain exclusive rights over words that competitors in the field in question may need to use.

The Board of Appeal further reasoned that, when assessing whether a mark is distinctive, each case must be evaluated individually and all circumstances, including the goods that the mark is intended to cover, must be taken into account. Word marks in a foreign language can lack distinctiveness in Iceland if it can be assumed that most Icelanders speak that language, as is the case with English.

Further, the board stated that the word mark CAFFE VERONA could be translated into Icelandic as 'kaffi frá Verona' or 'Verona-kaffi'. It was not disputed that the Italian word 'caffè' in the word mark CAFFE VERONA was descriptive of the goods listed in the application. Consequently, it was clear that the word 'caffè' could not be registered (as such) for the goods. The board referred to Article 15, Paragraph 1 of the act, which states that trademark rights acquired through registration do not cover elements of the mark which would not be registered separately.

However, the Board of Appeal concluded that the word 'Verona' afforded the mark CAFFE VERONA the distinctiveness required under the Trademarks Act.

The Board of Appeal then turned to the issue of whether the mark could mislead the public as to the origin of the goods under Article 14, Paragraph 1, Item 2 of the act, if the goods/services did not originate from Verona.

The board referred to arguments presented on behalf of the applicant (which is located in the United States) stating that coffee is not produced in the city of Verona or anywhere else in Italy. The board accepted this argument and agreed that it could not be concluded that Icelandic consumers would consider that goods identified by the trademark CAFFE VERONA originated from Verona in Italy. Consequently, the trademark was not considered misleading as to the origin of the goods within the meaning of the relevant provision of the act.

The Board of Appeal thus overturned the decision of the Patent Office and accepted the mark for registration.

Valborg Kjartansdóttir, Sigurjónsson & Thor, Reykjavík

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