CANCELLATION No 12 780 C (INVALIDITY)
Christoph Fischer GmbH, Högeringer Straße 25, 83071 Stephanskirchen, Germany, Multikraft Produktions- Und Handelsgmbh, Sulzbach 17, 4632 Pichl/Wels, Austria, Phytodor AG, Beckenriederstrasse 13, 6374 Buochs, Switzerland, and Ole Weinkath, Otto-Pankok-Weg 3, 46569 Hünxe-Drevenack, Germany (applicants), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative)
a g a i n s t
EM Research Organization Inc., 1478 Kishaba Kitanakagusuku, Okinawa 901-2311, Japan (EUTM proprietor), represented by Liesegang & Partner mbB, Rechtsanwälte Kettenhofweg 1, 60325 Frankfurt am Main, Germany (professional representative).
On 18/08/2020, the Cancellation Division takes the following
1. The application for a declaration of invalidity is upheld.
2. European Union trade mark No 11 250 313 is declared invalid in its entirety.
3. The EUTM proprietor bears the costs, fixed at EUR 1 080.
The applicants filed an application for a declaration of invalidity against European Union trade mark No 11 250 313 ‘EM’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:
Class 1: Chemical preparations, rust inhibitors, plant growth regulating preparations, plant growth forcing preparations, soil conditioners, fertilizers, organic fertilizer, compost.
Class 2: Paints.
Class 3: Soaps; cosmetics; dentifrices.
Class 16: Printed matter; books, magazines.
Class 21: Ceramics for household purposes.
Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.
Class 30: Salt.
Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals, malt; animal feed, namely, fish meal, synthetic animal feed, rice bran, mixed feed, soy sauce cake, soy bean oil meal, starch pulp, meat meal and formula feed.
Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; soft drinks, fruit juices, vegetables juices and whey beverages.
The applicants invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b)(c) and (d) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicants provide background information of the cancellation request and an overview of the history of ‘EM’, an abbreviation for ‘effective microorganisms’ (in English) or ‘effektive Mikroorganismen’ (in German), which are combinations of useful regenerative microorganisms that exist freely in nature. This mixture increases the natural resistance of soil, plants, water, humans and animals. The technology concerning EM was developed by Professor Teruo Higa from a University in Okinawa in the 1980s. EM technology claims to improve human health and hygiene, and compost and waste management as well as help in disaster clean-up. The term ‘EM’ has been used since the 80s and has become descriptive and/or common.
According to the applicants, ‘EM’ is not only understood by professionals, but is also understood by consumers who carry out gardening and landscaping. Therefore, the relevant target public is partly average consumers and partly professionals in the field of effective microorganisms. The awareness of the relevant public is high.
Abbreviations of descriptive terms are in themselves descriptive if the relevant public recognises them as having the full meaning of the non-abbreviated term. ‘Effective microorganisms’ are a symbiotic mixture of selected microorganisms, the main groups of which are lactic acid bacteria, yeasts and photosynthesis bacteria. According to the applicants, the contested mark was descriptive and devoid of distinctiveness, and had become a customary term for goods that could all contain or be produced using ‘effective microorganisms’ on the date when the EU trade mark application was filed (09/10/2012).
‘EM technology’ is used in various areas of life – in agriculture for: reducingdependency on fertilisers, chemicals and pesticides; restoring polluted or degraded land; environmental problems, such as water, air, soil pollution; fruit and flower cultivation; and in home use in: recycling kitchen waste; gardening; animal husbandry and pets care; fisheries, aquariums and swimming pools; personal body hygiene, and the prevention and treatment of health problems.
In the decision 02/11/2015, 9 320 C, ‘EM’, international registration designating the European Union No°1 013 416 was declared invalid for goods in Classes 1 and 31. However, the applicants also considered that the link for the relevant public between the contested mark and the remaining goods in Classes 2, 3, 16, 21, 29, 30 and 32 was close since ‘EM technology’ was of direct relevance to all the goods protected by the contested EUTM.
A substantial part of the relevant public had come to perceive the contested trade mark as merely designating the goods in question and not as those of a particular trader. All these goods could contain or be made of effective microorganisms or EM. For the above reasons, the contested trade mark ‘EM’ was registered contrary to Article 7 (1)(b), (c) and (d) EUTMR.
In support of their observations, the applicants filed the following evidence:
Attachment 1: excerpts from Wikipedia (in German and English) describing the meaning of ‘EM’.
Attachment 2: printout from www.acronymfinder.com giving the meaning of ‘EM’.
Attachment 3: Google searches for ‘EM effective microorganisms’ and ‘effektive Mikroorganismen’ from 09/02/2010, 12/08/2013 and 28/04/2014.
Attachment 4: 54 declarations of third parties (consumers of ‘EM’, authors of ‘EM’-related literature or traders in ‘EM’ goods) concerning their perception of ‘EM’ in farming, gardening and agriculture.
Attachment 5: article entitled EM research in the Netherlands (1997-1999) by Agriton and EMRO Nederland, published on the website of Agriton, an EM manufacturer in the Netherlands and a member of EMRO.
Attachment 6: article entitled Assessment of soil properties by organic matter and em-microorganism incorporation, by P.J. Valarini et al., 2003.
Attachment 7: an article about gas emissions in the keeping of pigs and cattle under the influence of ‘EM’ (Einfluss von ‘EffektivenMikroorganismen (EM)’ auf Ammoniak-, Lachgas- und Methanemissionen und auf das Geruchsemissionspotential aus einem Schrägbodenstall für Mastschweine), by Barbara Amon et al., 2004.
Attachment 8: thesis published in 2006 by Claudia Rackl about the practical use of effective microorganisms (EM) in plant cultivation and keeping animals (Diploma thesis, Praktische Erfahrungen mit effektiven Mikroorganismen (EM) in Pflanzenbau und Tierhaltung).
Attachment 9: excerpt from a master’s thesis by Matthias Tafelmaier, published in 2008, dealing with EM in gardening and agriculture.
Attachment 10: bachelor’s thesis based on scientific studies about EM, entitled Einsatz von Zusatzstoffen auf der Kläranlage Petershausen mit dem Ziel der Reduktion des Uberschussschlammes, Darstellung und Vergleiche, von Auswirkungen und Einsatzpotentialen, der Anwendungsbereiche, sowie deren Auswirkungen auf den Kläranlagebetrieb, by Ingeborg Henrich, 2011.
Attachment 11: paper showing the use of ‘EM’ in project work with primary school pupils.
Attachment 12: excerpts from books by Professor Higa entitled An Earth Saving Revolution and An Earth Saving Revolution II – EM-Amazing applications to agricultural, environmental, and medical problems.
Attachment 13: extracts (19 in total) from various books, all of which contain the term ‘EM’ in their titles, published between 2002 and 2013.
Attachment 14: list of articles in various magazines and newspapers concerning the use and effects of ‘EM’ in different areas of life.
Attachment 15: excerpts from various issues of EM-Journal published since 2008.
Attachment 16: printout from the website http://agritech.tnau.ac. explaining the term ‘EM’.
Attachment 17: printout from the website www.effectivemicroorganisms.co.uk explaining the term ‘EM’, and the possibilities and benefits of EM.
Attachment 18: printout from the website www.multikraft.com explaining the term ‘EM’.
Attachment 19: printout from the website http://joshkearns.blogspot.de dated December 2006.
Attachment 20: printouts from the websites of online shops showing the different fields of use of ‘EM’.
Attachment 21: decision of German Federal Patent Court, Ref. 25 W (pat) 10/08 concerning the invalidity of German trade mark No 305 74 689 ‘EM-Technologie’.
Attachment 22: decision, dated 19/07/2006, of the German PTO in relation to the German mark ‘EM Farming’.
Attachment 23: decision, dated 08/08/2012, of the German PTO in relation to the German trade mark ‘EM blond’.
Attachment 24: 20/01/2011, R 651/2010-1, EM-Nutrition / EM (fig.); 20/01/2011, R 650/2010-1, EM-Farming / EM (fig.) and 06/09/2012, R 2132/2011, EM-Farming (fig.) / EM (fig.) et al.).
Attachment 25: opposition decision 06/10/2011, B 1 566 879, EM blond / EM (fig.).
Attachment 26: brief of the EUTM proprietor in the ‘EM blond’ case in Germany, dated 19/09/2011.
Attachment 27: cancellation decision of 02/11/2015, 9 320 C EM by which the international registration No 1 013 416 was declared invalid. The EUTM proprietor has filed a notice of appeal against this.
Attachment 28: print-outs from http://wwwem-festa.de.
The EUTM proprietor replied that the evidence might show that the character string ‘EM’ could be understood as an abbreviation of ‘effective microorganisms’ – along with several other meanings – but not as a common description or customary term for the ingredients of the goods covered by the contested trade mark registration.
The EUTM proprietor considers that it is the distinctiveness of the character string ‘EM’ that has to be examined. The decisive question is whether ‘EM’ itself is considered as an acronym for the ingredients and/or the production method of the goods covered by the contested trade mark.
According to the EUTM proprietor, a recent market survey conducted by the well-known Institut für Demoskopie Allensbach on its behalf shows that, on average, only 2 % of the relevant public associate ‘EM’ with ‘effective microorganisms’ (see attachment L&P 1). This shows that ‘EM’ itself is not commonly understood as a descriptive acronym for ‘effective microorganisms’. It supports the argument that there is a significant difference between considering the distinctiveness of a trade mark consisting only of a letter combination and considering the distinctiveness of a trade mark consisting of a letter combination and a generic term. The EUTM proprietor cites the German Federal Court of Justice (BGH) judgement of 02/02/2012, AZ I ZR 50/11, section 3, (attachment L&P 2) in order to show that even if 3.7 % of the interviewees in a market survey associate the mark with a descriptive meaning concerning the goods covered by this mark, it cannot be concluded that a trade mark is non-distinctive.
The EUTM proprietor adds that the attachments submitted by the applicants do not prove the contrary. The Wikipedia extract and the entry in acronymfinder.com show that there are numerous meanings of the acronym ‘EM’ and the information that they contain lacks certainty. It does not show what ‘effective microorganism’ have to do with goods in Classes 1, 2, 3, 16, 21, 29, 30, 31 and 32. At most, the term ‘effective microorganisms’ is somewhat allusive in relation to the contested goods and may be perceived as referring to the production method of (any) cosmetic product, foodstuff, paints or beverage in general.
The EUTM proprietor then analyses the remaining evidence in detail. The acronym finder does not describe how effective microorganisms are used in connection with the goods in Classes 1, 2, 3, 16, 21, 29, 30, 31 and 32. The internet search in Google is for ‘EM effective Mikroorganismen’, and not for ‘EM’. The searches for ‘EM Chemicals’, ‘EM Fruits’, ‘EM foodstuff’, ‘EM cosmetics’, ‘EM magazines’, ‘EM salt’ or ‘EM beverages’ have not revealed any results that obviously show that ‘EM’ is an abbreviation for ‘effective microorganisms’ (see attachments L&P 3 – L&P 8).
The EUTM proprietor argues that the documents that have been submitted by the applicants cannot be taken into consideration to show that ‘EM’ itself is a descriptive term for the goods covered by the contested trade mark. Most of the documents either refer to the EUTM proprietor’s trade marks or to the trade mark infringing products of the applicants. The declarations in attachment 4 were made under questionable circumstances since they contain highly similar or identical wordings and many of them originate from people who have considerable self-interest in the invalidation of the contested trade mark. The 54 statements do not prove that the products bearing the contested mark target a specialised public or that this public sees the contested mark’s word sign ‘EM’ as a purely descriptive indication of those products. Moreover, those statements are not reliable or representative of the relevant public.
Secondly, the evidence all comes from one of the interveners against which the applicants had lodged numerous actions for infringement and, furthermore, the evidence expressly refers to the mark and the goods of one of the applicants. Thirdly, in addition to the dates when the information appeared on the Wikipedia and Acronym Finder internet sites being subsequent to the relevant period, this evidence is not from reliable sources. Fourthly, the cited publications show only that the letters ‘EM’ can signify ‘effective microorganisms’ or are the abbreviation for ‘effective microorganisms’. They do not, however, show that the average consumer who purchases fertiliser and agricultural or forestry goods considers the group of letters ‘EM’ as a descriptive indication of those goods.
In support of its observations, the EUTM proprietor filed the following evidence:
L&P 1: Allensbach survey conducted in August 2016. According to the survey, on average only 2 % of the relevant public associate ‘EM’ with effective microorganisms.
L&P 2: German Federal Court of Justice (BGH) judgment of 02/02/2012, AZ I ZR 50/11, section 33, Bogner B / Barbie B (in German, partial translation about relevance of a market survey).
L&P 3 to 8: Google results for the searches ‘EM Chemicals’, ‘EM Fruits’, ‘EM foodstuff’, ‘EM cosmetics’, ‘EM salt’ or ‘EM beverages’.
L&P 9 and 10: extracts for several ‘EM’ registrations of the applicants.
L&P 11 and 12: judgement (partial translation) of the Regional Court of Hamburg finding that ‘EM’ is a distinctive character string; confirmed by an oral hearing in relation to the appeal to the judgment.
In their rejoinder, the applicants comment in details on the decision of the Board of Appeal of 07/02/2017, R 2442/2015-1, EM (fig.) that confirmed the invalidation of the contested international registration designating the European Union (EU) for goods in Classes 1 and 31: the same reasoning should apply to the remaining goods contested in the present case, namely goods in Classes 2, 3, 16, 21, 29, 30 and 32. The survey produced by the EUTM proprietor is not based on the relevant public. Detailed arguments explain why the mark is descriptive for the different goods covered by the contested trade mark and that there is hardly any area of life in which ‘EM’ could not be used. In particular, as regards paints, EM have the effect of eliminating harmful substances and are useful against bad odours; EM are used for cosmetics, soaps and dentifrices as ingredients; they can be the subject matter of goods in Class 16 such as publications and books; they are used in ceramics as they have positive effects on drinking water; they are used in the production of fruits and vegetables, meat, fish, poultry and game and animal food; there is ‘EM’ salt, and beverages can be made using plants and fruits grown with EM.
In support of their observations, the applicants filed the following evidence:
Attachment 29: copy of decision of 07/02/2017, R 2442/2015‑1, EM.
Attachment 30: excerpt of international registration No°1 013 416 ‘EM’.
In its final answer, the EUTM proprietor mentions that the purpose of the market survey was to determine the extent to which the relevant public associates EM in connection with fertilisers, food supplements, facial creams and toothpaste with effective microorganisms.
The goods that are covered by the contested trade mark are products of daily use. They are offered in the internet, supermarkets and retail stores and regularly target average consumers and not circles of experts. The fact that only 3 % of the interviewees associated the character string EM with effective microorganisms shows that consumers who encounter a packaging of a fertiliser, a cosmetic product or a dietary supplement labelled with ‘EM’ do not easily associate ‘EM’ with effective microorganisms.
With regard to the fertiliser packaging, only 2 % understood EM as ‘effective microorganisms’; 19 % thought it was an ingredient, but only 3 % stated what ingredient EM stood for; 16 % did not give an explicit response.
Concerning the face cream packaging, only 2 % understood EM as effective microorganisms; 21 % thought it was an ingredient, but only 7 % stated what ingredient EM stood for (5 % gave an answer other than effective microorganisms); 14 % did not give an explicit response.
Less than 0.5 % of the public who were shown toothpaste packaging branded with ‘EM’ associated EM with effective microorganisms; 17 % thought it was an ingredient, but only 4 % stated what ingredient EM stood for (but the answer was other than effective microorganisms); 13 % did not give any explicit response.
Only one 1 % of the public who were shown a food supplement packaging branded with EM associated EM with effective microorganisms; 19 % thought it was an ingredient but only 5 % stated what ingredient EM stood for (4 % gave answers other than effective microorganisms); 14 % did not give any explicit response.
In support of its last observations, the EUTM proprietor filed the following evidence:
LP 13: decision of 07/02/2017, R 2442/2015‑1, EM (fig.) appealed to the General Court (notices of the Court of 31/03/2017 and 03/05/2017 and translations).
LP 14: Was ist EM - Effektive Mikroorganismen?, an article from the EMJournal, magazine of the EM e.V., founded in Germany in 2001 to promote regenerative microorganisms for the rejuvenation of man, nature and the environment and referring to the original products of the applicants.
LP 15: document in order to show that the diploma thesis of Nina Jungbauer refers to EM as products of the EUTM proprietor.
LP 16: document showing that the total issue in 2011 of the magazine DEUTSCHE MOLKERZEITUNG amounted to 3 800 copies.
LP 17: extract of the writ dated 20/02/2012 and an English translation where the EUTM proprietor refers to a book of Prof. Higa and a book of Dr. Anna Katharina Zschoke. Extract from the German dictionary DUDEN and an English translation.
LP 18: extract of the EUTM Proprietor’s writ dated 26/03/2012 and an English translation thereof.
LP 19: extract of the EUTM Proprietor writ of 02/04/2012 with documents such as the books of Prof. Higa, and Google and English translations.
On 29/03/2018, the Office suspended the proceedings because of the pending parallel procedure between one of the applicants and the EUTM proprietor (02/11/2015, 9 320 C, EM). On 17/10/2019, the applicants sent copies of judgments rendered in these proceedings (namely 25/09/2018, T‑180/17, EM, EU:T:2018:591, and 25/09/2019, C‑728/18, EM, EU:C:2019:781) that were forwarded to the EUTM proprietor for information. Since the Cancellation Division suspended the present case in order to be able to take into consideration the final decision on 02/11/2015, 9 320 C EM, the result of the appeals will be duly considered in the present decision.
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 from 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).
Considerations common to all the grounds invoked in conjunction with Article 59(1)(a) EUTMR, namely Article 7(1) (b), (c) and (d) EUTMR
Relevant point in time
The Cancellation Division notes that the relevant point in time for which the assessment on the claimed descriptive and non-distinctive character of the sign ‘EM’ must be made is the filing date, namely 09/10/2012. In other words, it is necessary to establish whether the term ‘EM’ was seen as a descriptive/non-distinctive or customary term designating an essential feature or characteristic of the goods concerned at the time of the filing.
Relevant public and level of attention
The distinctive character, descriptiveness or customary character of a trade mark must be assessed, first, in relation to the goods or services for 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.2993:318, § 29).
The average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
In the present case, the goods are partly general goods for average consumers, and partly specialised goods for a professional public. In view of the nature of the goods in question, the awareness of the relevant public will vary from average to high.
The term ‘EM’ is used, inter alia, as the abbreviation for the English term ‘effective microorganisms’ and the German equivalent ‘effektive Mikroorganismen’.
Since the term ‘EM’ is used in English and in German, the relevant public with reference to which the absolute ground for refusal must be examined is the English- and German-speaking consumer in the EU (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1993:323, § 26; and 27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 30).
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.
By prohibiting the registration as European Union 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.)
‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).
The contested trade mark is a word mark exclusively composed of the letters ‘EM’, which is the common abbreviation of the expressions ‘effective microorganisms’ in English and ‘effektive Mikroorganismem’ in German. Effective microorganisms are a combination of useful regenerative microorganisms that exist freely in nature and that have not been subject to any processing. ‘EM’ or ‘effective microorganisms’ is also called ‘EM technology’, which is a scientifically unconfirmed method of improving soil quality and plant growth using a mixture of microorganisms consisting mainly of lactic acid bacteria, purple bacteria and yeasts, which co-exist for the benefit of any environment to which they are introduced. The abbreviation ‘EM’ in upper-case letters existed at the time the EUTM was filed in 2012 in a range of fields that used ‘EM technology’.
The concept of ‘effective microorganisms’ was developed by Japanese agronomist Teruo Higa, from the University of the Ryukyus in Okinawa, who reported in the 1970s that a combination of approximately 80 different microorganisms were capable of positively influencing decomposing organic matter so that it reverted into a ‘life promoting’ process.
EM technology is used to maintain practices such as sustainable farming and living, and to support human health and hygiene, animal husbandry, compost and waste management, and disaster clean-up, and is generally used to promote functions in natural communities.
For the purposes of assessing descriptiveness, it must be determined whether the relevant public will make a sufficiently direct and specific association between the expression and the goods/services for which registration is sought (20/07/2004, T‑311/02, LIMO, EU:T:2004:245§ 30). Therefore, it has to be determined whether there is a direct link or not between the sign ‘EM’ and the registered goods in Classes 1, 2, 3, 16, 21, 29, 30, 31 and 32.
The term ‘EM’ immediately informs consumers without further reflection that the goods covered are or related to ‘effective microorganisms’ or that ‘effective microorganisms’ are employed in these goods. The term ‘EM’ describes in general that ‘effective microorganisms’ may be used/present in a large variety of goods, inter alia, the ones covered by the contested trade mark. In fact, ‘EM’ or ‘effective microorganisms’ could be employed in any of the goods covered to increase the natural resistance of soil, plants, water, humans and animals, and to improve the quality of foodstuffs, beverages, ceramics, fruit and flower cultivation, and could also be the subject of printed matter covered by the contested sign. The applicants provided detailed arguments explaining why the contested mark is descriptive for the different goods covered showing that there is hardly any area of life in which ‘EM’ could not be used.
Therefore, the mark conveys obvious and direct information regarding the kind and composition/subject of the goods in question.
It follows that the link between ‘EM’ and the goods covered is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) and Article 7(2) EUTMR.
It is apparent from the evidence produced by the applicants that the abbreviation ‘EM’ was already used, at the relevant date, to designate the expression ‘effective microorganisms’. The abbreviation EM does not refer to a specific product or to a trade mark.
The veracity of the statements provided by the applicants cannot be called into question simply by the fact that they are signed by people interested for professional reasons in the issue of effective microorganisms (30/05/2013, T‑396/11, Ultrafilter International, EU:T:2013:284, § 20 and 21). Moreover, the EUTM proprietor has not produced any documents that disprove those statements. In the absence of evidence to the contrary, it must be assumed that each witness signed their statement of their own free will and takes responsibility for the content. Furthermore, the evidential value of a statement cannot be denied on the ground that it was not made before a notary public (28/10/2009, T‑137/08, Green/Yellow, EU:T:2009:417, § 50 and 51).
For the Cancellation Division to refuse to register a mark under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that provision actually be in use at the time of the application for registration in a way that is descriptive of goods or services in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that the signs and indications could be used for these purposes (13/07/2017, T‑650/16, QD, EU:T:2017:489, § 26).
As to the market survey produced by the EUTM proprietor, it confirms that the contested trade mark ‘EM’ is already perceived by at least a small part of the relevant public as the abbreviation of ‘effective microorganisms’, which are used as ingredients for the goods.
The association between the sign and the goods is sufficiently direct and specific for that expression to be covered by the prohibition laid down in Article 7(1)(c) EUTMR.
Consequently, the contested EUTM, already at the time of its filing, consisted exclusively of indications that may serve, in trade, to designate a characteristic of the contested goods, and, therefore, the mark has been registered contrary to the provision of Article 7(1)(c) EUTMR in relation to these goods.
Non-distinctiveness — Article 7(1)(b) EUTMR
According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (19/09/2002, C‑104/00 P, Companyline, EU:C:2002:506, § 21). This is clearly applicable to the present case.
Given that the mark has a clear descriptive meaning in relation to the goods for which protection is sought, the impact of the mark on the relevant public will be primarily descriptive in nature, eclipsing any impression that the mark could indicate a commercial origin.
The term ‘EM’ is commonly used in the relevant field for ‘effective microorganisms’. Potential consumers will not see the term ‘EM’ as a fanciful trade term or a trade mark denoting a particular source of commercial origin of the goods concerned, but as a general and commonly used abbreviation referring to the involvement of ‘effective microorganisms’ in the goods in question.
The term ‘EM’, without any additional element that could be regarded as fanciful or imaginative, does not enable the relevant public to distinguish the goods of one undertaking from those of others in the relevant field. The term ‘EM’, as applied for here, should be kept free for common use by all.
Consequently, taken as a whole, the mark applied for ‘EM’ is devoid of any distinctive character and is not capable of distinguishing the goods for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) EUTMR.
Since the mark is totally refused based on Article 7(1)(c) and (b) EUTMR, for economy of proceedings, there is no need to examine the other ground invoked by the applicants, namely Article 7(1) (d) EUTMR.
In the light of the above, the Cancellation Division concludes that the application is totally successful and the European Union trade mark should be declared invalid for all the contested goods.
According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicants in the course of these proceedings.
The Cancellation Division
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.