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Knowing Your Audience – Trade Marks and Deceit in the EU

On 27 October 2016 the EU’s General Court handed down its judgment in respect of popular UK-based coffee chain, Caffè Nero, and its application on appeal to register its trade marks with the EU Intellectual Property Office.

Despite being well-established in the UK and with UK registered trade marks, the EUIPO dismissed Caffè Nero’s appeal stating that their trade marks were of such a nature that they would deceive the public.

In particular, Italians might be led to believe that Caffè Nero serve ‘black coffee’ and nothing more. Moreover, their other products (such as cakes and other confectionery) must by derivation contain black coffee.

Using words in different languages for company names and logos is increasingly popular in the UK. For the many businesses wishing to protect their trade marks in Europe in the uncertain wake of ‘Brexit’ it would be best to heed the warning of the EUIPO in ‘Caffè Nero’ and seek professional advice on registering a trade mark in the EU.

The specialist team at Guy Williams Layton can provide initial advice on both UK and EU Trade Mark registration and ongoing advice should any challenges arise during the registration process.

We also provide FIXED costs for Trade Mark Applications in the UK and EU.

Citation:

Caffe Nero Group v EUIPO (CAFFE NERO) (Judgment) [2016] EUECJ T-37/16 (27 October 2016)

For more information call Michael Sandys (Head of Commercial) at Guy Williams Layton today on 0151 236 7171