Decision on Cancellation No 11756 C page:8 of 9
The Cancellation Division will therefore now examine the other grounds on which the
application as regards the remaining contested goods to which Article 7(1)(b) EUTMR
does not apply.
Customary character – Article 7(1)(d) EUTMR
The applicant claims that the contested EUTM consists exclusively of signs or
indications which have become customary in the current language or in the bona fide
and established practices of the trade, within the meaning of Article 7(1)(d) EUTMR.
The assessment of the alleged customary use of a sign must also be carried out in
relation to the goods or services in respect of which the trade mark is registered and in
relation to the perception of the sign by the relevant public (16/03/2006, T-322/03,
Weisse Seiten, EU:T:2006:87, § 49). In addition, actual customary use, not mere
potential use as in the case of descriptive character, must be established (see, by
analogy, 21/04/2004, C-64/02 P, OHIM / Erpo Möbelwerk, EU:C:2004:645, § 29). In
other terms, a finding that a sign has become a customary designation should be
corroborated by evidence of actual customary use of the sign, unless this fact is likely
to be known by anyone or may be learnt from generally accessible sources
(22/06/2006, C-25/05 P, Storck / OHIM, EU:C:2006:422, § 50-51). Furthermore,
customary use must be proven not to be sporadic but must be associated with the sign
by the majority of those who are concerned by such use (Weisse Seiten, loc. cit., § 33).
In the present case, the applicant gave no indication of the way in which the contested
sign has become customary in relation to any of the remaining goods in Class 30.
Therefore, this ground for invalidity must be rejected as regards the remaining goods.
Deceptiveness – Article 7(1)(g) EUTMR
Finally, and specifically in relation to the remaining contested goods, the applicant
contends that the EUTM is likely to deceive the public.
According to the combined provisions of Article 59(1)(a) and Article 7(1)(g) EUTMR,
trade marks shall not be registered, and if registered shall be declared invalid, if they
are ‘of such a nature as to deceive the public, for instance as to the nature, quality or
geographical origin of the goods or services’. The concept of ‘deceit’ presupposes the
existence of actual deceit or a sufficiently serious risk that the consumer will be
deceived by a ‘sufficiently specific designation’ of potential characteristics of the goods
and services covered by the trade mark. Only where the targeted consumer is made to
believe that the goods and services possess certain characteristics, which they do not
in fact possess, will he be deceived by the trade mark (24/09/2008, T-248/05,
I.T.@Manpower, EU:T:2008:396, § 64-65).
Again, the applicant has not given any indication of the way in which the contested sign
could deceive the relevant public in relation to the remaining contested goods in
Class 30, namely coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour
and preparations made from cereals, bread, pastry and confectionery, ices; honey,
treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice;
aromatic preparations for food; condiments; seasonings; essences for foodstuffs
[except etheric essences and essential oils]; farinaceous foods. The term ‘SOBA’,
which refers to a type of noodles, does not refer to any characteristic of these goods
and, consequently, cannot in principle deceive the targeted consumers.