CANCELLATION No 18781 C (INVALIDITY)

Nishio Cha Kyodo Kumiai, 2-3, Shimoyashiki Kamimachi,; Nishio-shi; Aichi 445-0894 Japan (applicant), represented by Liesegang & Partner mbB, Rechtsanwälte,
Kettenhofweg, 60325 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Nanjing Smile Catering Management Co., Ltd.,
S-B2-7 Sunken Plaza, No. 133 Olympic Avenue, Jianye District
Nanjing, People’s Republic of China (EUTM proprietor), represented by José Izquierdo Faces, Iparraguirre, 42 - 3º izda, 48011, Bilbao (Vizcaya), Spain (professional representative).

On 13/08/2018, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is partially upheld.

2. European Union trade mark No 16 730 103 is declared invalid for some of the contested goods and services, namely:

Class 30: Coffee; Tea; Tea-based beverages; Candy; Bread; Cakes; Ice cream; Pizzas; Condiments; Pastries.

Class 43: Café services; Canteen services; Cafeteria services; Mobile canteen for food supply; Teahouse services; Bar services; Providing food and drink in doughnut shops; Snack-bar services; Ice cream parlors.

3. The European Union trade mark remains registered for all the remaining services, namely:

Class 43: Hotel services.

4. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 16 730 103 (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 30: Coffee; Tea; Tea-based beverages; Candy; Bread; Cakes; Ice cream; Pizzas; Condiments; Pastries.

Class 43: Café services; Canteen services; Cafeteria services; Hotel services; Mobile canteen for food supply; Teahouse services; Bar services; Providing food and drink in doughnut shops; Snack-bar services; Ice cream parlors.

The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b), (c), (g) and (j) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

As a preliminary point, the applicant argues that the EUTM refers to a well-known green tea from Japan and that the EU Commission and the Japanese Government are currently negotiating the registration of ‘Nishio Matcha’ as a protected geographical indication (Official Journal of the EU C242/20, Enclosure LP1a). As indicated by the applicant, ‘Nishio Matcha’ has been registered as a geographical indication by the Japanese Government on 03/03/2017 based on the Japanese Geographical Indications Act (Enclosure LP1b). The applicant indicates that the tea from Nishio region is also called Matcha tea, which is a fine powdered green tea. Nishio is one of the most famous Matcha producing regions in Japan (Enclosures LP2 and LP3). It finally argues that the Chinese characters in the sign are a translation of the geographical indication Nishio (Enclosure LP4).

Regarding the application of Article 7(1)(c) EUTMR, the applicant defines the relevant public as the Japanese and Chinese who live within the European Union, visitors from Japan and China as well as European, in particular German, Austrian, French and British tea drinkers and tea enthusiasts. The applicant considers that the EUTM is descriptive of the geographical origin of the goods and services and a Chinese translation thereof. It insists on the fact that Nishio is a very famous area for the production of green tea, as 20% of the Japanese green tea is produced in that region. Moreover, the German, Austrian, French and British consumers will also consider Nishio in relation to tea as a geographical indication. It submits evidence of online shops and blogs in those countries that deal with tea or matcha tea and refer to Nishio as one of the leading growing areas of this kind of tea (Enclosures LP5 to LP57). Therefore, it concludes that the sign is descriptive of the geographical origin of all the goods (except coffee). The applicant explains that the contested goods other than tea and coffee can be produced using Matcha tea as an ingredient. It submits evidence of German, Austrian, French and British websites referring to tea-based beverages, candy, bread, cakes, ice-cream, pizzas, condiments and pastries made with matcha tea (Enclosures LP58 to LP152). As regards the contested services in Class 43 café services, canteen services, cafeteria services, hotel services, mobiles canteen for food supply, teahouse services, bar services, providing food and drink in doughnut shops; snack-bar services and ice-cream parlors, the applicant considers that the relevant public would conclude that the service provider is focused on beverages or goods that are based on green or Matcha tea originating from the Nishio region. It refers to various decisions of the Boards of Appeal in support of this conclusion (decisions of 24/03/2015, R2501/2014-5, of 01/02/20012 R1331/2011-4 and of 09/12/2016, R1336/2016-2). Moreover, according to the applicant, the Chinese characters are the translation of the geographical indication Nishio. They will be perceived as such not only by the Japanese and Chinese speaking part of the public (the characters in Japanese are quasi identical) but also by the average consumer who would consider the characters as the translation of the word Nishio (Enclosures LP153 to LP160). It refers to previous decisions of the Office, the German trade mark office and the Irish Intellectual Property Office regarding the refusal of applications consisting of descriptive terms in Latin and its translation in Chinese or Japanese Characters (Enclosures LP161 to LP167).

Regarding the application of Article 7(1)(b) EUTMR, the applicant refers to its arguments above. It concludes that due to the fact that the trade mark is descriptive, it is therefore also non-distinctive. It further adds that the sign has been protected as a geographical indication on agricultural, forestry and fishery products and foodstuffs for non-alcoholic beverages in Japan. It adds that the international registration No 132 880 NISHIO MATCHA (fig.) has been provisionally refused by the trade mark Offices of the US, Philippine and Singapore because NISHIO MATCHA is considered as a geographical indication for the goods applied for (Enclosures LP168 and LP169).

Regarding the application of Article 7(1)(g) EUTMR, the applicant argues that the sign will be misleading regarding tea and related goods and services as it could be used for goods that do not originate from Nishio or the sign may lead the public to think that the tea originates from China. The sign is also misleading regarding coffee as it could be perceived as coffee from Nishio, while coffee is not cultivated in Nishio.

As far as Article 7(1)(j) EUTMR is concerned, the applicant merely states that the Japanese application for the protection of NISHIO MATCHA in the European Union is prior than the filing date of the EUTM. It refers to the Guidelines for EUTM examination.

The applicant submitted a series of enclosures in support of its arguments and referred to above (Enclosures LP1 to LP169) which can be consulted in the corresponding file.

The EUTM proprietor did not submit observations in reply.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Union.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date before the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

Consideration common to all the grounds invoked, namely Article 52(1)(a) EUTMR in conjunction with Article 7(1)(b), (c) and (g) EUTMR.

The EUTM was applied for on 16/05/2017 and registered on 18/09/2017. It consists of the figurative mark registered in connection with the following goods and services:

Class 30: Coffee; Tea; Tea-based beverages; Candy; Bread; Cakes; Ice cream; Pizzas; Condiments; Pastries.

Class 43: Café services; Canteen services; Cafeteria services; Hotel services; Mobile canteen for food supply; Teahouse services; Bar services; Providing food and drink in doughnut shops; Snack-bar services; Ice cream parlors.

Relevant point in time

The relevant point in time in respect of which the assessment of the absolute grounds of refusal pursuant to Article 7 in relation to the sign must be made is the filing date of the trade mark (i.e. 16/05/2017).

Relevant public

The applicant argues that the relevant public consists of the Japanese and Chinese who live within the European Union, visitors from Japan and China as well as European, in particular German, Austrian, French and British tea drinkers and tea enthusiasts. In support of its allegations, the applicant submitted substantial evidence in Enclosures LP5 to LP57. They mainly consist of references to online shops for the sale of tea products and blogs in German (e.g. www.noelker-noelker.de, www.darjeelingtee.de, www.thedailytea.com, www.tee-bakker.net, www.dallmayr-wersand.de, www.amida-tee.de, www.tee-magazin.de, www.teelirium.de, www.perfect-lifestyle.net, www.sunday.de, www.hakuma.at, www.harly-tea.at, www.foodist.at, www.kafeeezentrale.at, www.jaaegertee.at), French (www.kumikomatcha.fr, www.the-azadi.fr, www.europages.fr, www.pichipich-japon.fr, www.cotematcha.fr, www.gastronomiac.com) and English (www.omgteas.co.uk, www.teapigs.co.uk, www.matcha-green-tea.co.uk, www.dailymail.co.uk, www.botanic-lab.co.uk), including partial translations, all referring to Nishio as one of the production or the production area of the matcha tea, Wikipedia articles about MATCHA and NISHIO and extracts from www.web.archive.org to prove that some of the webpages were active before the filing date of the EUTM.

The applicant further submits evidence of the Chinese and Japanese population living in the European Union (more than two million and 180,000 respectively, Enclosure LP156 and LP157 with Wikipedia articles). According to the enclosures, there are around 700,000 Chinese overseas population living in France, 466,000 in the UK and 212,000 in Germany, whereas there are 70,000 Japanese overseas population living in Germany, 63,000 in the UK and nearly 31,000 in France.

The Cancellation Division preliminary considers that as the goods and services in respect of which the EUTM is registered in Class 30 and Class 43 are general consumer goods and services, the relevant public will consist of average consumers from the general public.

Moreover, in light of the evidence and arguments put forward by the applicant, the Cancellation Division considers appropriate to assess whether the contested EUTM has been registered contrary to the provisions of Article 7 EUTMR with regard to the average consumer in Germany, Austria, France and the United Kingdom, including the Chinese and Japanese overseas population in Germany, France and the United Kingdom. It should be noted in this regard that pursuant to Article 7(2) EUTMR, Article 7(1) EUTMR applies also when the ground for non-registrability obtain in only part of the Union.

Admittedly, part of the evidence is undated. However, taking into account the sort time span between the filing of the EUTM (16/05/2017) and the date of the submission of the evidence (22/02/2018), it can be assumed that, if not all, at least part of the undated internet sites included in the submitted evidence were also available by the time of the filing of the EUTM and in any event allow to draw conclusions regarding the situation at the time of the filing with regard to the average consumer in the abovementioned countries. This is further confirmed by some of the excerpts from www.web.archive.org.

Finally, in line with the applicant’s submissions, the Cancellation Division considers that the relevant public also includes the Chinese and Japanese living in those Member States with substantial overseas population and where the applicant has submitted evidence of the use of the term NISHIO, that is, Germany, the United Kingdom and France. In view of the massive evidence presented by the applicant regarding the use of the term NISHIO as a production area of tea, it is plausible to assume that the Chinese overseas population in those countries is equally familiar with the term NISHIO. This is all the more so regarding the Japanese overseas population who can be reasonably expected to be familiar with this Japanese region.

Descriptiveness – Article 7(1)(c) EUTMR

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

By prohibiting the registration as EU trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

According to settled case-law, the signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage, from a consumer’s point of view, to designate, either directly or by reference to one of their essential characteristics, goods such as those in respect of which the contested EUTM is registered (22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 24).

In accordance with the same case-law, for a sign to be caught by the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the sign and the goods in question to enable the public concerned immediately to perceive, without further thought, a description of the goods in question or one of their characteristics (PAPERLAB, loc. cit., paragraph 25). Moreover, in order to be caught by Article 7(1)(c) EUTMR, it is sufficient that at least one of the possible meanings of a word sign designates a characteristic of the goods concerned (11/04/2008, C‑344/07 P, Focus, EU:C:2008:222, § 21).

The existence of such a relationship must be assessed, firstly, in relation to the goods and services covered by the contested EUTM and, secondly, in relation to the perception of the relevant public (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 30).

The applicant argues, in a nutshell, that the EUTM will be perceived as describing the geographical origin of the goods and services.

According to settled case-law, the registration of geographical names as trade marks is not possible where such a geographical name is either already famous, or is known for the category of goods concerned, and is therefore associated with those goods or services in the mind of the relevant class of persons, or it is reasonable to assume that the term may, in view of the relevant public, designate the geographical origin of the category of goods and/or services concerned (judgments of 15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 51; 25/10/2005, T-379/03, Cloppenburg, EU:T:2005:373, § 38).

The Cancellation Division considers that it is clear from the evidence submitted by the applicant that NISHIO is a region in Japan known by the relevant public for its production of powdered green tea (also known as Matcha tea). The Japanese authorities have registered the sign as a geographical indication (Enclosure LP1b) and the European Union is currently negotiating with Japan its protection in the European Union. As it can be seen in Enclosure LP1a, ‘NISHIO MATCHA’ is included among the list of geographical indications that the Japanese authorities have presented for protection in the framework of the on-going negotiations between the European Union and Japan for a Free Trade Agreement (see also Official Journal 2017/C 242/10 of 27/07/2017).

The applicant argues that the Chinese characters in the sign ( ) are quasi identical to the Japanese characters for the term NISHIO ( , see the Official Journal 2017/C 242/10 of 27/07/2017 referred to above). Considering the Chinese and Japanese overseas population, the applicant considers that, the relevant consumer within this group will understand these characters as the translation of the word NISHIO.

The Cancellation Division also agrees with the applicant that the part of the relevant public in Germany, Austria, France and the UK who understands Chinese or Japanese will clearly perceive the characters as a mere translation of the term NISHIO.

Moreover, the Cancellation Division considers that it cannot be excluded that for the part of the relevant public who does not speak Chinese or Japanese, the addition of the Chinese characters before the term NISHIO does not confer distinctiveness to the EUTM for the following reasons.

As shown by the applicant in Enclosures LP159 and L160 and as concluded by the Office in previous decisions referred to by the applicant, Chinese or Japanese characters are commonly used in the packaging of Asiatic products next to their equivalent Latin characters. Therefore, the vast majority of the consumers in Germany, Austria, France and the UK, even if they will not understand the Chinese characters, will not consider them as a badge of origin but figurative elements which relate to the Asiatic origin of the products or services.

In light of the foregoing, it is concluded that the sign, as a whole, is exclusively composed or at least will be understood by the relevant public as the designation a geographical location with figurative elements that also refer to that origin.

Next, it has to be considered whether the relevant public, when confronted with the sign in relation to the goods and services in Class 30 and 43, will perceive it as a mere indication of the geographical origin of these goods and services, as argued by the applicant.

First, as regards the contested tea and tea-based beverages, taking into account the fact that NISHIO is one of the major matcha tea producing regions in Japan and as such perceived by the relevant public, the Cancellation Division concludes that the trade mark is descriptive of the geographical origin of tea and tea-based beverages.

Secondly, the applicant has submitted voluminous evidence to show that matcha tea or matcha tea powder is used as the main flavouring ingredient for candy (Enclosures LP 72 to LP82 containing screenshots of internet sites offering for sale matcha tea candies); bread (Enclosures LP83 to LP93 containing screenshots of internet sites with recipes or the sale of matcha tea based bread); cakes (Enclosures LP94 to LP108 containing screenshots of internet sites with recipes for tea cakes); ice cream (Enclosures LP109 to LP23 containing screenshots of internet sites with recipes for ice cream made with matcha tea); pizzas (Enclosures LP124 to LP126 containing screenshots of internet sites with green dough made of matcha tea) condiments (Enclosures LP127 to LP131 containing screenshots of internet sites which offer matcha tea for sale as condiment) and pastries (Enclosures LP139 to LP152 containing screenshots of internet sites with recipes of cookies made with matcha tea). In light of the foregoing, it is likely that the relevant public, when confronted with the sign in relation to these goods, will also perceive it as a meaningful expression indicating the geographical origin of its main flavouring ingredient.

Thirdly, as regards the contested services in Class 43 café services; Canteen services; Cafeteria services; Hotel services; Mobile canteen for food supply; Teahouse services; Bar services; Providing food and drink in doughnut shops; Snack-bar services; Ice cream parlors, the applicant considers that the relevant public could conclude that the vendors of these services are focused on beverages or foods that is based on green or matcha tea originating from the NISHIO region.

The Cancellation Division considers that the contested café services; Canteen services; Cafeteria services; Mobile canteen for food supply; Teahouse services; Bar services; Providing food and drink in doughnut shops; Snack-bar services; Ice cream parlors are indeed intended, among others, for the provision of food and/or drinks that can consist of tea or are tea-based products or are tea-flavoured products. Taking into account that NISHIO is a term, descriptive of the geographical origin of the goods, it can be safely assumed that the relevant public, when perceiving the sign in relation to the contested services, will consider that the goods offered under these services are tea or tea-based or tea-flavoured coming from the NISHIO region. As a result, the relevant public will understand the EUTM as a meaningful expression that contains obvious and direct information about geographical origin in connection to the contested services.

However, the above reasoning cannot be applied to the contested hotel services. They consist of a service which provides a room in which someone may live or stay normally for a limited period of time. Hotels normally also offer food and drinks, for instance for covering breakfast needs, or may have a restaurant. However, restoration is not the main intended purpose of hotel services but it is only an ancillary service offered for an extra fee. Considering the lack of evidence that NISHIO could be perceived as a meaningful term other than the geographical origin of tea or tea-based goods and related services (for instance, if it had been proven the it is a major tourist destination), the Cancellation Division considers that the applicant has failed to show in which respect the EUTM can be considered descriptive of hotel services.

In light of the foregoing, it is concluded that the EUTM No 16 730 103 consists exclusively of an indication that may serve, in trade, to designate a characteristic of all the contested goods in Class 30 except coffee (which was not challenged under Article 7(1)(c) EUTMR) and all the contested services in Class 43 except hotel services (which were challenged under this ground) and that the same situation already existed at the time of filing of the contested mark, and, therefore, the mark has been registered contrary to the provision of Article 7(1)(c) EUTMR.

However, the trademark did not convey obvious and direct information at the time of its filing regarding the kind, quality, quantity, intended purpose, value, geographical origin or the time of rendering of hotel services, or other characteristics such as the subject matter. It follows that the link between and hotel services is not sufficiently close in the European Union for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR.

This conclusion is not put into question by the previous decisions of the Boards of Appeal referred to by the applicant (that is, decisions of 24/03/2015, R2501/2014-5, of 01/02/20012 R1331/2011-4 and of 09/12/2016, R1336/2016-2) as none of the signs examined by the Boards of Appeal was applied for hotel services.

The examination of the request for invalidity will continue as regards the other grounds for invalidity invoked by the applicant in connection with coffee and hotel services.

Non-distinctiveness – Article 7(1)(b) EUTMR

Under Article 7(1)(b) EUTMR trade marks which are devoid of any distinctive character are not to be registered.

The distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 29).

According to case-law, the signs referred to in Article 7(1)(b) EUTMR are signs which are regarded as being incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26).

The applicant’s arguments regarding lack of distinctiveness of the EUTM are based on the assumption that the contested sign is descriptive of the geographical origin of the goods and services. This applies to all the goods and services for which the trade mark was previously found descriptive under Article 7(1)(c) EUTMR.

However, as has been seen above, descriptiveness of the contested sign at the time of filing cannot be concluded in relation to hotel services. Therefore, no lack of distinctiveness of the contested EUTM can be affirmed on account of its alleged descriptiveness. Furthermore, the applicant did not submit examples of use of the term NISHIO as a non-distinctive expression at the time of filing of the EUTM in relation to hotel services. It should be further noted that coffee was not challenged by the applicant under this ground.

In view of the above, the invalidity application must be rejected also on the ground for invalidity laid down in Article 60(1)(a) EUTMR in conjunction with Article 7(1)(b) EUTMR with respect to hotel services.

Deceptiveness – Article 7(1)(g) EUTMR

Article 7(1)(g) EUTMR provides that marks that 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, will not be registered.

The applicant argues that the sign will be misleading under Article 7(1)(g) EUTMR as it could be perceived as coffee from Nishio, while coffee is not cultivated in Nishio.

The Cancellation Division considers that taking into account, on the one hand, that the term NISHIO will be associated with tea by the relevant public, as it is a region famous for its production of green tea but with no coffee production and, on the other hand, the connexions between coffee and tea (beverages of plant origin, consumed in largely the same occasions, with the same distribution channels and similar packaging), it is reasonable to assume that the relevant public, when confronted with coffee marketed under the sign will be induced to believe that it consists of tea. Threfore, the contested EUTM would give the consumer false information about the products and for that reason it will be deceived.

In view of the above, the invalidity application must be upheld on the ground for invalidity laid down in Article 60(1)(a) EUTMR in conjunction with Article 7(1)(g) EUTMR with respect to coffee.

For the sake of completeness, it is noted that the applicant has only invoked Article 60(1)(a) EUTMR in conjunction with Article 7(1)(g) EUTMR in relation to coffee. Therefore, the Cancellation Division will not examine the applicability of this ground for invalidity in connection with hotel services.

Conflict with a geographical indication – Article 7(1)(j) EUTMR

Pursuant to Article 7(1)(j) EUTMR, the Office shall not register ‘trade marks which are excluded from registration, pursuant to Union legislation or national law or to international agreements to which the Union or the Member State concerned is party, providing for protection of designations of origin and geographical indications’.

Article 7(1)(j) EUTMR applies only for PDOs/PGIs that were applied for before the EUTM application and are registered at the time the EUTM application is examined.

The relevant dates to establish the priority of a trade mark and a PDO/PGI are the date of application of the EUTM application (or the so-called Paris Convention priority, if claimed) and the date of application for protection of a PDO/PGI to the Commission respectively.

According to the applicant, Japan sent an application for the registration of NISHIO MATCHA as a geographical indication in the European Union before the filing date of the contested trademark. It has not been registered yet. However, the applicant refers to the Office Guidelines where it is indicated that Article 7(1)(j) EUTMR applies not only in relation to PDO/PGIs applied for before the filing of the EUTM and registered at the time of the EUTM filing but also in relation to PDO/PGIs which have been applied for before the filing of the EUTM but had not yet been registered at the time of examining the EUTM application. The applicant argues that as the application for protection to the European Union was sent before the priority date of the contested EUTM, the trade mark was registered in breach of Article 7(1)(j) EUTMR.

Having examined the evidence submitted by the application, the Cancellation Division considers that the applicant has failed to show that the application for protection in the European Union of the geographical indication NISHIO MATCHA is prior to the filing of the contested EUTM (that is, 16/05/2017). Enclosure LP1a contains the publication in the European Union Official Journal 2017/C 242/10 of the Commission’s invitation to Member States or third country or any natural or legal person having a legitimate interest, resident or established in a Member State or in a third country, to submit oppositions to the protection of the geographical indications listed in the publication (including NISHIO MATCHA). The publication is dated 27/07/2017, that is, after the filing date of the EUTM. The publication does not contain any other information which would indicate an earlier date as the date of application by Japan for the protection of the geographical indication NISHIO MATCHA.

The applicant also invokes the Japanese designation applied for protection in Japan on 07/12/2015 and registered as a protected geographical indication on 06/03/2017 (Enclosure LP1b). However, Article 7(1)(j) EUTMR does not apply since a third-country geographical indication protected under the national law of the third country (in this case, Japanese law) is not recognised and protected expressis verbis under EU legislation.

In view of the above, the invalidity application must be rejected also on the ground for invalidity laid down in Article 60(1)(a) EUTMR in conjunction with Article 7(1)(j) EUTMR with respect to hotel services.

Conclusion

In the light of the above, the Cancellation Division concludes that the application is partially successful and the European Union trade mark should be declared invalid for part of the contested goods and services, namely:

Class 30: Coffee; Tea; Tea-based beverages; Candy; Bread; Cakes; Ice cream; Pizzas; Condiments; Pastries.

Class 43: Café services; Canteen services; Cafeteria services; Mobile canteen for food supply; Teahouse services; Bar services; Providing food and drink in doughnut shops; Snack-bar services; Ice cream parlors.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Jessica LEWIS

Elisa ZAERA CUADRADO

José Antonio GARRIDO OTAOLA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.