The European Court of Justice (ECJ) has upheld the decision of the European Union Intellectual Property Office (EUIPO) to reject Caffè Nero’s application to register its trademark.

The EUIPO initially rejected the application on the basis that the trademark lacked any distinctive character and that it was purely descriptive. The ECJ supported this decision as, in its view, the words ("Caffè" and "Nero") – which in Italian means “Coffee” and “Black” – suggested that the trademark would be understood by the public as “being evocative of coffee which is black in colour”. The name was therefore too descriptive of the goods and services that it provided (teas, coffees, biscuits and confectionery, and coffee shops and retail stores) and that it was not unusual enough to have a distinctive character.

This judgement highlights the care that must be taken when registering your trademark and the importance of brand identity and public perception. Trademark owners should consider whether their brand has a “distinctive character” for the purposes of registration and that it does not simply describe the goods and services with which it wishes to be associated.