CANCELLATION No 11051 C (INVALIDITY)
Greek Wine Federation, (Syndesimos Ellinikou Oinou), Nikis 34, 10557 Athens, Greece (applicant) represented by Theodorus Georgopoulos, 50A Nikus str, 10558 Athens, Greece (professional representative)
a g a i n s t
Полтурист, Братя Миладинови №16, ет. 2, офис 3, 100 София, Bulgaria (proprietor) represented by Emil Delchev, 8 Tsar Kaloyan Str, 2nd floor,1000 Sofia, Bulgaria (professional representative).
1. The application for a declaration of invalidity is rejected in its entirety.
The applicant filed an application for a declaration of invalidity against European Union trade mark No 12 063 806 (figurative mark):
The request is directed against all the goods covered by the EUTM:
Class 33: Вино. (wines)
The applicant invoked Article 52(1)(a) EUTMR in conjunction with Article 7(1)(b), (c), (f) and (g) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant observes: that the word element of the mark “imiglykos” is the transliteration of a Greek word used to designate the sugar content of wine. The descriptive nature of the term is recognised by Greek legislation which pre-dates Greece´s accession to the European Union. Its meaning has not changed since that time. It is the Greek version of the term medium sweet (or semi-sweet) which is recognised in European law. The word element of the sign in question is therefore unquestionably descriptive for at least the Greek-speaking part of the Community, it being remembered that transliterations of Greek words into Latin characters must be treated in the same way as words written in Greek characters for the purpose of Article 7(1)(b) and (c) of the EU Trade mark Regulation. (T-281/09, Deutsche Steinzeug Cremer & Breuer AG V OHIM, paragraph 34.) The applicant argues that the figurative element of the mark is representative of half a lyre and that it will be perceived as a mere decorative element by the average consumer. In those circumstances, the consumer will perceive the conspicuous verbal element of the mark as a trade mark (T-312/03, Wassen International Ltd v OHIM, paragraph 37), especially given its size and vertical position. Overall, the mark lacks sufficient distinctive character.
The applicant goes on to argue that registration of the mark may also be contrary to Article 7(1)(f), given that informing consumers correctly about the sugar content of wine is important from a public health perspective. Arguably, this public health perspective comes under the rubric of a public policy objection.
The applicant recognises that the term is free for use by any member state according to EU legislation but believes that it should be given the same level of protection as a term as geographical indications or designations of origin, insofar as it gives specific information as to sugar content.
It is the applicant´s view that, in the absence of an appropriate limitation, this mark is liable to mislead the relevant public as to the sugar content (nature/quality) of the wines specified, and that it therefore falls foul of Article 7(1)(g) of the Regulation.
In addition, the consumer will be misled into believing that the wines are of Greek origin, given that the verbal element represents a Greek word and the figurative element represents an instrument which is associated with ancient Greece. Signs that are deceptive in respect of the provenance of goods fall under Article 7(1)(g) too.
In response, the EUTM proprietor submits that it is not only lawful to use the verbal element of the term, it is standard practice to incorporate terms which are indicative of the sugar content of wine within the industry. The descriptive word element is vertically depicted and placed beside a partial representation of a musical instrument. Given the figurative element, the mark cannot be said to “exclusively” designate a characteristic of the goods within the meaning of Article 7(1)(c) EUTMR. Furthermore, the instrument has no relation to the goods. Therefore, the composite mark is distinctive as a whole. By way of further support for this argument, the proprietor submits that comparable marks have already been registered by the Office for goods in class 33.
The proprietor also submits that confusion from a public health point of view does not form part of a public policy objection for the purpose of Article 7(1)(f) EUTMR. In any event, as part B of Annex XIV to Regulation (EC) No. 607/2009 permits the use of terms which are indicative of the sugar content of wines, and as the proprietor is entitled to use the term “IMIGLYKOS” in respect of its medium sweet wines, a putative public health objection would simply not arise.
Furthermore, the term “IMIGLYKOS” is not indicative of geographical origin and cannot be contrary to Article 7(1)(g) on that basis either. The instrument half-depicted is reminiscent of ancient Egypt, Rome and Greece and is no more than evocative. Given the market realities of how wine is actually distributed and sold, the average consumer will not be deceived as to provenance.
An objection under Article 7(1)(g) does not arise where a non-deceptive way of using a category of goods exists as a possibility. There is no contradiction between the specified goods and the term.
ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR
According to Article 52(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).
Descriptiveness Article 7(1)(c)
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.
Article 7(2) EUTMR states that paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.
By prohibiting the registration as Community 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.
(See judgment of 23/10/2003, C 191/01 P, ‘Wrigley’, paragraph 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’ (judgment of 26/11/2003, T 222/02, ‘ROBOTUNITS’, paragraph 34).
The descriptive nature of the verbal element of the mark in respect of the goods at issue is not in dispute between the parties. The parties are in agreement that the term is permitted within the sector to denote a specific category of wines, and that it has long been recognised as an industry term. The Cancellation Division takes the view that the direction and positioning of the verbal element of the mark makes no material difference to its generic content. The consumer would look elsewhere for the trade mark.
However, it is also common case between the parties that the mark features a figurative representation too. The proprietor described this figurative element as being a representation of half a harp, while the applicant insists that it is a lyre. Either way, both parties agree that half a stringed instrument is depicted. Even if the Office were to take the applicant´s argument at its highest and accept that the instrument refers to ancient Greece (only), it is still clear that the instrument is just that, something which merely refers to an ancient civilisation or has an association with it.
According to settled case-law, a figurative sign may be descriptive if its graphical elements do not divert the relevant public´s attention from the descriptive message conveyed by the words or do not change the descriptive meaning of those words in relation to the goods concerned, or if they reinforce or stress the descriptive meaning of those words in relation to the goods concerned. (Judgement of 11 July 2012, Case T-559/10, Laboratoire Garnier et Cie v OHIM, “natural beauty”, at paragraphs 25-27; Judgement of 15 May 2014, Case T-366/12, Katjes Fassin GmbH & Co. KG/OHIM “Yoghurt Gums”, paragraphs 29-33; Judgement of 14 January 2015, Case T-69/14, Research and Production Company/OHIM “melt water”, at paragraph 36.)
The Cancellation Division does not agree that the figurative element will be perceived as merely decorative. As the image has a particular association, which is not in dispute between the parties, it goes beyond mere stylisation. Furthermore, it demands something of the consumer in order to complete the image. This partial depiction serves as a distraction from the descriptive semantic content. The stringed instrument does not describe a characteristic of the goods rather it evokes a particular period of civilisation when such stringed instruments were played, perhaps while imbibing wine. It is highly suggestive as opposed to descriptive. It does not stress or reinforce the term “IMIGLYKOS”.
Furthermore, the sign consists of a two-tone quadrant, whereby the figurative elements and the word elements are repeated four times, and the background of the upper quadrant contrasts with that of the lower quadrant.
Therefore, it cannot be said that the mark was exclusively descriptive within the meaning of Article 7(1)(c) EUTMR at the time of filing.
Distinctiveness- Article 7(1)(b)
Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.
According to settled case-law, the signs referred to in Article 7(1)(b) CTMR are regarded as incapable of performing the essential function of a trade mark, namely of identifying the origin of the goods, thereby enabling the consumer who acquired the goods 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 (see judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26).
‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question’ (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 88).
The essential issue is whether the contested figurative mark permits the average consumer, who is assumed to be reasonably well-informed and reasonably observant and circumspect, to distinguish the products concerned from those of other undertakings without conducting an analytical examination and without paying particular attention.
The applicant has not shown that a graphic representation of half a lyre will be seen as a mere decoration, or that it is standard to see such images on wine products. Unlike a simple geometrical shape or a non-stylised representation of a glass or a bottle of wine for example, it communicates a message here. It is not just a decoration. The possibility that the figurative element, which is not depicted in an orthodox fashion, confers a modicum of intrigue and therefore distinctiveness (on the otherwise descriptive sign) cannot therefore be excluded. It may be seen to endow the mark with distinctive character when viewed as a whole, so that it is somewhat more than the sum of its individual parts and allowed to fulfil its essential function as a trade mark. (Judgement of 15/09/2005, C‑37/03 P, ‘BioID’).
The mark applied for is also in quadrant form so that the descriptive content and the memorable element is repeated four times. This aspect adds considerably to the overall distinctiveness of the sign in its registered form.
Deceptiveness – Article 7(1)(g) EUTMR
Pursuant to Article 7(1)(g) EUTMR, trade marks which 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 shall not be registered.
According to case-law, this ground for invalidity presupposes the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (see judgments of 4 March 1999, C-87/97, para 41). Thus, a mere theoretical possibility that the public may be mistaken does not itself fall within an objection pursuant to Article 7(1)(g) EUTMR (see judgment of 17 April 2007, R 1102/2005-4, “SMARTSAUNA”, para 32).
In addition, Article 7(1)(g) EUTMR “implies a sufficiently specific designation of potential characteristic 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 do not in fact possess, will he be deceived by the trade mark.” (see judgment of 24 September 2008, T-248/05, “I.T.@MANPOWER”, para 65).
In the present case the descriptive part of the figurative mark “IMIGLYKOS” is the transliteration of a Greek term which is used to describe wine with a specific sugar content, in other words a known category of wine.
In the present case the goods at issue are:
Class 33: Wine
The descriptive content of the mark clearly relates to wine. The line of argumentation of the EUTM proprietor cannot be followed in this context.
Consumer protection is a serious issue and Article 7(1)(g) EUTMR is a special norm, which protects consumers from misleading trade signs or once registered also from trademarks, which become misleading due to a dishonest use.
A deception in the sense of Article 7(1)(g) EUTMR is particularly present if the trade mark, per se, contains an incorrect indication in relation to the product claimed, which is objectively capable of being misleading in any reasonably conceivable case in which it is used according to the application, with it being necessary to take into account the presumed expectations of an average consumer who is reasonably well informed and reasonably observant and circumspect and any social, cultural or linguistic factors (see also judgment of 13 January 2000, C- 220/98, ‘Lifting’, paras 27 and 29 and in which case the Court weighed the risk of misleading consumers against the requirements of the free movement of goods).
Moreover, according to the case-law relating to Article 3(1)(g) of Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), the wording of which is identical to that of Article 7(1)(g) CTMR, the circumstances for refusing registration referred to in Article 7(1)(g) CTMR presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (see judgment of 30 May 2006, C-259/04, ‘Elizabeth Emanuel’, para. 47 and the case-law cited therein).
In order to fall foul of this provision, the mark must contain an objective indication about characteristics of the goods which is clearly in contrast to the list of goods and services, assuming that the mark would be used as filed for the goods and services claimed in the specification. If there is a possible non deceptive way of use for a category of goods that falls under the specification, the objection does not apply. The objection does, however, apply if the sign applied for clearly contradicts the list of goods and services (see Decision of the First Board of Appeal R 422/1999-1 of 13 September 2000, ‘Titan’, paragraph 18).
In the present case the Cancellation Division has to examine under Art. 52 in combination with Art. 7(1)(g) EUTMR if the mark is deceptive or not.
The Office Guidelines on Examination provide the following:
(…) The Office, as a matter of practice, makes the twin assumptions that:
There is no reason to assume that a trade mark is intentionally applied for to deceive customers. No deceptiveness objection should be raised if a non-deceptive usage of the mark is possible vis-à-vis the goods and services specified: i.e. an assumption is made that non-deceptive use of the sign will be made if possible.
The average consumer is reasonably attentive and should not be regarded as particularly vulnerable to deception. An objection will generally only be raised where the mark leads to a clear expectation which is patently contradictory to, for instance, the nature or quality or geographical origin of the goods.
Since “wines” may have the sugar content indicated by the term “IMIGLYKOS”, honest use of the term IMIGLYKOS may be made in respect of “wines.” Honest use is therefore presumed.
Similarly, although the Cancellation Division accepts that Greek nationals and Cypriots may be led to believe that wine products which bear the contested trade mark (i.e. which bear the transliteration of a Greek word together with the partial depiction of an instrument associated inter alia with ancient Greece) actually do come from Greece, that does not suffice to come within the ambit of Article 7(1)(g). Even where it could be assumed or proven that Greek-speakers would make an assumption as to the origin of goods so labelled (as opposed to simply an evocation), honest use may be made of the mark in respect of the provenance of “wines”. Therefore, again, honest use may be presumed. Therefore, the present mark was not registered in breach of Article 7(1)(g) EUMTR.
In the context of Article 52 EUTMR, the Cancellation Division cannot investigate any potential or factual actual deceptive use. This can only be made in the context of a revocation procedure. It is clear that the applicant did expressly file such a request.
The Office Guidelines (Cancellation) state in this context:
The EUTMR and EUTMIR clearly distinguish between an application for revocation and an application for a declaration of invalidity. Therefore, revocation and invalidity grounds cannot be combined in a single application but must be subject to separate applications and entail the payment of separate fees.
In the present case there is thus no manifest contradiction between the mark (situation at the time of filing) and the goods at issue, which can be used in an honest way.
The question of any possibly misuse or deceptive use after registration is not decisive under Art. 52(1)(a) EUTMR as a separate provision does apply, namely Art. 51(1)(c) EUMTR.
Public policy – Article 7(1)(f) EUTMR
As no possible deceptive use of the mark may be established in these proceedings in relation to the goods specified, it is clear that it cannot be established that the information conveyed by the semantic content of the mark is in any way contrary to public health considerations.
As the applicant based its putative public policy objection on such health considerations, the objection under Article 7(1)(f) falls away.
The cancellation request is unfounded for the reasons stated.
According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.
According to Rule 94(3) EUTMIR and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
María Belén IBARRA
The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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.