Provisional text
JUDGMENT OF THE GENERAL COURT (Second Chamber)
6 October 2017 (*)
(EU trade mark — Application for the EU word mark ‘KARELIA’ — Absolute ground for refusal — Descriptive character — No distinctive character — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 (now Article 7(1)(b) and (c) of Regulation (EU) 2017/1001))
In Case T‑878/16,
Ino Karelia, residing in Kalamata (Greece), represented by M. Karpathakis, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,
defendant,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 19 September 2016 (Case R 1562/2015-5), relating to an application for registration of the word sign ‘KARELIA’ as an EU trade mark,
THE GENERAL COURT (Second Chamber),
composed of M. Prek, President, E. Buttigieg (Rapporteur) and B. Berke, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 9 December 2016,
having regard to the response lodged at the Court Registry on 3 March 2017,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 23 October 1998, the applicant, Ms Ino Karelia, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
2 Registration as a mark was sought for the word sign ‘KARELIA’.
3 The goods in respect of which the registration was sought are in, inter alia, Class 4 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles, wicks’.
4 By decision of 1 July 2015, the examiner partially dismissed the application on the basis of Article 7(1)(b) and (c) (now Article 7(1)(b) and (c) of Regulation 2017/1001) and Article 7(2) of Regulation No 207/2009 (now Article 7(2) of Regulation 2017/1001), on the ground that the sign was descriptive and was devoid of distinctive character, in particular for ‘industrial oils and greases; lubricants; fuels (including motor spirit) and illuminants’ falling within Class 4 (‘the relevant goods’).
5 On 4 August 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against that decision.
6 By decision of 19 September 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In particular, it found that the relevant public was composed of the general public in Finland and Sweden and the public of those countries specialising in, inter alia, the automobile and petrochemical industry, that relevant public being used to seeing the names of the regions of those countries translated into English and being highly attentive (contested decision, paragraphs 20 to 25). According to the Board of Appeal, the word ‘karelia’ of the mark applied for was likely, at the time when the application was made, to refer, for the relevant public, to the geographical origin of the relevant goods, since Karelia is the English name of the region situated on the border between Finland and Russia, known for having a highly developed forestry industry and for biomass and biofuels development (contested decision, paragraphs 44, 45 and 50). Given that the geographical origin is one of the characteristics of the relevant goods within the meaning of Article 7(1)(c) of Regulation No 207/2009, the Board of Appeal held that the mark applied for was descriptive (contested decision, paragraph 50) and, as such, was also devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 (contested decision, paragraph 51).
Forms of order sought
7 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
8 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
9 In support of its action, the applicant relies on two pleas in law, the first alleging infringement of Article 7(1)(c) of Regulation No 207/2009 and the second alleging infringement of Article 7(1)(b) of that regulation.
First plea in law alleging infringement of Article 7(1)(c) of Regulation No 207/2009
10 By its first plea in law, the applicant submits, in essence, that the Board of Appeal erred when it held that the mark applied for was descriptive of the relevant goods, whereas, contrary to what the Board of Appeal found, even if the word ‘karelia’ is known by the relevant public as the name of a region situated between Finland and Russia, it is not used in trade to refer to the geographical origin of the relevant goods and is not likely to refer to such geographical origin in the future. Consequently, the applicant claims that the Board of Appeal erred in law in its application of Article 7(l)(c) of Regulation No 207/2009.
11 EUIPO disputes the applicant’s arguments and contends that this plea in law should be rejected.
12 Under Article 7(1)(c) of Regulation No 207/2009, ‘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’ may not be registered.
13 In addition, Article 7(2) of Regulation No 207/2009 provides that ‘paragraph 1 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the [European Union]’.
14 According to settled case-law, Article 7(1)(c) of Regulation No 207/2009 pursues an aim in the public interest, namely, that descriptive indications or signs relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision prevents, therefore, such signs and indications being reserved to one undertaking alone because they have been registered as trade marks (judgments of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 25, and of 15 October 2003, Nordmilch v OHIM (OLDENBURGER), T‑295/01, EU:T:2003:267, paragraph 29).
15 As regards, more particularly, signs or indications which may serve to designate the geographical origin of the categories of goods in relation to which registration of the mark is applied for, especially geographical names, it is in the public interest that they remain available, not least because they may be an indication of the quality and other characteristics of the categories of goods concerned, and may also, in various ways, influence consumer tastes by, for instance, associating the goods with a place that may give rise to a favourable response (see, to that effect, judgments of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 26, and of 15 October 2003, OLDENBURGER, T‑295/01, EU:T:2003:267, paragraph 30).
16 Firstly, the registration of geographical names as trade marks where they designate specified geographical locations which are already famous, or are known for the category of goods or services concerned, and which are therefore associated with that category in the mind of the relevant class of persons, is excluded as, secondly, is the registration of geographical names which are liable to be used by undertakings and must remain available to such undertakings as indications of the geographical origin of the category of goods or services concerned (see, to that effect, judgments of 15 October 2003, OLDENBURGER, T‑295/01, EU:T:2003:267, paragraph 31 and the case-law cited, and of 15 January 2015, MEM v OHIM (MONACO), T‑197/13, EU:T:2015:16, paragraph 48).
17 However, it must be noted that, in principle, Article 7(1)(c) of Regulation No 207/2009 does not preclude the registration of geographical names which are unknown to the relevant class of persons — or at least unknown as the designation of a geographical location — or of names in respect of which, because of the type of place they designate, such persons are unlikely to believe that the category of goods or services concerned originates there (see, to that effect, judgments of 15 October 2003, OLDENBURGER, T‑295/01, EU:T:2003:267, paragraph 33 and the case-law cited, and of 15 January 2015, MONACO, T‑197/13, EU:T:2015:16, paragraph 49).
18 A sign’s distinctiveness cannot be assessed other than by reference to the goods and services concerned, on the one hand, and by reference to the understanding which the relevant persons have of it, on the other (judgment of 15 October 2003, OLDENBURGER, T‑295/01, EU:T:2003:267, paragraph 34).
19 In making that assessment, EUIPO is bound to establish that the geographical name is known to the relevant class of persons as the designation of a place. What is more, the name in question must suggest a current association, in the mind of the relevant class of persons, with the category of goods or services in question, or else it must be reasonable to assume that such a name may, in the view of those persons, designate the geographical origin of that category of goods or services. In making that assessment, particular consideration should be given to the relevant class of persons’ degree of familiarity with the geographical name in question, with the characteristics of the place designated by that name, and with the category of goods or services concerned (see judgments of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 38 and the case-law cited, and of 15 January 2015, MONACO, T‑197/13, EU:T:2015:16, paragraph 51).
20 In the present case, as regards the definition of the relevant public, the Board of Appeal held, in paragraphs 20, 24 and 25 of the contested decision that, having regard to the relevant goods and to the meaning of the English word ‘karelia’ — referring to the Karelia region situated in Finland, but with historic ties to Sweden — the relevant public was composed of the general public in Finland and Sweden and the public of those countries specialising in, inter alia, the automobile and petrochemical industry. In addition, it found in paragraph 27 of the contested decision that the relevant public understood the English word ‘karelia’ as referring to a defined geographical location, namely the Karelia region in the Eastern Finland province. Those findings of the Board of Appeal are not contested by the applicant.
21 Therefore, in order to assess whether the Board of Appeal was entitled to find that the mark applied for had descriptive character by referring to the geographical origin of the relevant goods, it is appropriate to examine whether, in the light of the findings set out in paragraphs 14 to 19 above, having regard to the characteristics of the geographical place referred to by the word constituting the mark applied for, the latter is known by the relevant public for a category of relevant goods, so that there is a link, in the mind of that public, between that place and those goods, or whether such a link could reasonably be established in the future.
22 In this regard, it is appropriate to note that the Board of Appeal held, in paragraph 44 of the contested decision, that the Karelia region had a reputation among the relevant public for having a highly developed forestry industry and for biomass and biofuels development. In addition, it follows from the sources cited by the Board of Appeal in paragraphs 33, 35 and 36 of the contested decision that the development of the wood processing industry, of the utilisation of biomass and, more generally, of the production of bioenergy is one of the objectives for the future of Finland and, in particular, of the Finnish Karelia region. Those facts are not disputed by the applicant.
23 As the relevant goods are fuels and the products that can be obtained from them or from biomass, namely industrial oils and greases, lubricants and illuminants, the Board of Appeal held, in paragraph 45 of the contested decision, that the relevant public would make a connection between those goods and the Karelia region, which has a reputation for the production of biofuels and biomass, and would conclude that the mark applied for is descriptive in that it refers to that region as being their geographical origin. The Board of Appeal also noted, in paragraph 49 of the contested decision, that the absolute ground of refusal applied not only where the geographic designation refers to a place that is already known for the goods in question, but also when they are liable to be used by undertakings as indications of geographical origin and may therefore be perceived as such by the relevant public.
24 The applicant disputes that assessment by Board of Appeal.
25 In the first place, the applicant claims that, even if the Karelia region were sufficiently well known by the relevant public as a defined geographical location, it has not been proved that such place can be held to have a reputation for or be known for the category of relevant goods by a section of the public comprising the Swedish general and specialised public, who know this region for historical reasons alone as a former Swedish territory, or whether it is likely that, in the future, such a section of the relevant class of persons could envisage that such category of products come from that place. By that argument, the applicant is claiming that the Board of Appeal failed to prove to the requisite legal standard the link in the mind of a part of the relevant public between the geographical place referred to by the mark applied for and the category of goods concerned within the meaning of the case-law set out in paragraph 16 above.
26 In that regard, it should be noted that the applicant does not contest the finding of the Board of Appeal regarding the existence of a link between the Karelia region referred to by the mark applied for and the goods concerned in the mind of the part of the relevant public composed of the Finnish general public and the Finnish specialised public. Nor has the applicant submitted or shown that that part of the public constituted a negligible proportion of the relevant public.
27 The Court has already held that, for a sign to fall within the scope of the prohibition in Article 7(1)(b) or (c) of Regulation No 207/2009, it was sufficient that a ground of refusal existed in relation to a non-negligible part of the target public and that it was unnecessary in that regard to examine whether other consumers belonging to the relevant public were also aware of that sign (see, to that effect, judgments of 25 November 2015, bd breyton-design v OHIM (RACE GTP), T‑520/14, not published, EU:T:2015:884, paragraph 29, and of 15 December 2016, Intesa Sanpaolo v EUIPO (START UP INITIATIVE), T‑529/15, EU:T:2016:747, paragraph 55). In addition, it should be noted that, under Article 7(2) of Regulation No 207/2009, Article 7(1) of that regulation applies notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
28 It follows that, in the present case, even assuming that the Swedish relevant public fails to make the connection between the Karelia region to which the mark applied for refers and the relevant goods, such a circumstance cannot call into question the Board of Appeal’s finding that the mark applied for is descriptive, if it has been established that such a sign refers to the origin of the relevant goods in the eyes of a non-negligible part of the relevant public comprising the Finnish general public and the Finnish specialised public, which should be assessed subsequently.
29 In the second place, relying on case-law, the applicant complains that the Board of Appeal failed to prove, in the context of the assessment of the descriptive character of the mark applied in so far as it referred to the geographical origin of the category of goods concerned, either that it was common practice in trade to indicate the geographical origin of those goods, or the relevance of such an indication for the relevant class of persons in the context of the assessment of the quality of those goods. The applicant submits that, on the contrary, the undertakings involved in the production or trade in oils, greases and lubricants do not, in commercial practice, indicate the geographical origin of those goods and that such an indication is not considered relevant by the relevant public.
30 In that regard, it should be pointed out that it does indeed follow from case-law that, even if the relevant public does know a geographical place, it does not automatically follow that the sign may serve, in trade, to designate geographical origin. In order to examine whether the conditions for application of the ground for refusal to register at issue have been satisfied, account must be taken of all the relevant circumstances, such as the nature of the goods or services designated, the greater or lesser reputation, especially within the economic sector involved, of the geographical location in question and the relevant public’s greater or lesser familiarity with it, the customs obtaining in the area of activity concerned and the question to what extent the geographical origin of the goods or services at issue may be relevant, in the view of the persons concerned, to the assessment of the quality or other characteristics of the goods or services concerned (see judgment of 25 October 2005, Cloppenburg, T‑379/03, EU:T:2005:373, paragraph 49).
31 In the present case, in order to come to the finding that the mark applied for will be perceived by the relevant public as describing the geographical origin of the relevant goods, the Board of Appeal took into account the considerable reputation of the Karelia region for the production of biomass and biofuels and the awareness that the public has of the importance of that industry and of bioenergy production in Finland and, more specifically, in the Karelia region. Consequently, the Board of Appeal was entitled, taking into account the characteristics of that region and the awareness that the relevant public has of it, to find that the word ‘karelia’ referred to a place that currently has a connection with the relevant goods in the mind of the relevant public, at the very least as regards the Finnish public. In addition, it should be noted that, as is stated by the examiner (see the sixth sub‑paragraph of paragraph 9 of the contested decision), that connection is likely to become stronger still in the future as the production and use of biofuels increases in the Finnish Karelia region, which follows implicitly from paragraphs 33, 35, 36 and 49, when read together, of the contested decision.
32 Even if it is assumed that the matters referred to by the applicant are proven, namely, that it is not customary within the sector in question to refer to goods’ geographical origin and that the geographical indication is not relevant for the consumers’ choice, they are insufficient to call into question that finding.
33 It should be noted that, as is stated by EUIPO, according to case-law, regardless of whether the characteristics of the goods or services being described are fundamental or accessory on a commercial level, the wording of Article 7(1)(c) of Regulation No 207/2009 does not differentiate between the characteristics that the mark’s component signs or indications can refer to. In the light of the public interest underlying that provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (see, to that effect, judgments of 22 May 2014, NIIT Insurance Technologies v OHIM (EXACT), T‑228/13, not published, EU:T:2014:272, paragraph 33 and the case‑law cited, and of 28 September 2016, Intesa Sanpaolo v EUIPO (WAVE 2 PAY and WAVE TO PAY), T‑129/15 and T‑130/15, not published, EU:T:2016:575, paragraph 29; see also, by analogy, judgment of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 102).
34 In addition, it must be noted that, in order for EUIPO to refuse registration of a trade mark under Article 7(1)(c) of Regulation No 207/2009, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those 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 such signs and indications could be used for such purposes (see judgment of 7 June 2005, Münchener Rückversicherungs-Gesellschaft v OHIM (MunichFinancialServices), T‑316/03, EU:T:2005:201, paragraph 41 and the case-law cited).
35 Consequently, it is appropriate to confirm the finding of the Board of Appeal that the mark applied for is descriptive of one of the characteristics of the relevant goods in that, at the very least in the mind of a non-negligible part of the relevant public comprising the Finnish general public and the Finnish specialised public, the word of the mark will be perceived as an indication of geographical origin of those goods as coming from the Karelia region.
36 That finding is not rebutted by the applicant’s argument that the word ‘karelia’ refers to a Greek surname. The applicant maintains that the Board of Appeal erred when it held, in paragraph 29 of the contested decision, that that fact had not been proved to the requisite legal standard, despite it being shown by a number of documents in the case file before the Board of Appeal.
37 However, even if it is assumed that some consumers within the Finnish relevant public may recognise that word as also referring to a Greek surname, which is not proven, it should be noted that a circumstance in which a mark may have several different meanings does not preclude the application of the absolute ground of refusal set out in Article 7(1)(c) of Regulation No 207/2009. It follows from settled case-law that a word sign must be refused, pursuant to Article 7(1)(c) of Regulation No 207/2009, if at least one of its possible meanings identifies a feature of the goods or services concerned (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32, and of 15 December 2011, Mövenpick v OHIM (PASSIONATELY SWISS), T‑377/09, not published, EU:T:2011:753, paragraph 38).
38 In the present case, the applicant does not contest the assertion that the word ‘karelia’ is known by the relevant public as the name of the Karelia region, partially situated in Finland. Consequently, other possible meanings for that geographical indication are without relevance since it is sufficient if at least one of its possible meanings designates a characteristic of the goods or services concerned (see, to that effect, judgments of 7 June 2005, MunichFinancialServices, T‑316/03, EU:T:2005:201, paragraph 33, and of 20 July 2016, Internet Consulting v EUIPO — Provincia Autonoma di Bolzano‑Alto Adige (SUEDTIROL), T‑11/15, EU:T:2016:422, paragraph 51).
39 In the light of the foregoing, it must be held that the Board of Appeal was entitled to find that the mark applied for was descriptive of the category of goods concerned and that it could not therefore be registered as an EU trade mark, being incompatible with the absolute ground of refusal set out in Article 7(1)(c) of Regulation No 207/2009. The first plea in law must therefore be dismissed.
Second plea in law alleging infringement of Article 7(1)(b) of Regulation No 207/2009
40 By its second ground, the applicant argues that the Board of Appeal erred in law when applying Article 7(1)(b) of Regulation No 207/2009, in that, having found that the mark applied for was descriptive, it was wrong in holding that the mark was devoid of descriptive character. The applicant claims that, as a surname, the word ‘karelia’ has distinctive character in respect of goods referred to by the mark applied for.
41 EUIPO contests the position adopted by the applicant.
42 In that regard, it should be noted that, according to settled case-law, it is sufficient that one of the absolute grounds for refusal listed in Article 7(1) of Regulation No 207/2009 applies for the sign at issue not to be registrable as an EU trade mark (judgment of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29).
43 In addition, the overlap between the absolute grounds for refusal implies, in particular, that a word mark descriptive of characteristics of goods or services may, on that account, and subject to the application of Article 7(3) of Regulation No 207/2009, be devoid of any descriptive character in relation to those goods or services, without prejudice to other reasons why it may be devoid of distinctive character (see order of 18 March 2010, CFCMCEE v OHIM, C‑282/09 P, EU:C:2010:153, paragraph 52 and the case-law cited, and judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 33 and the case-law cited).
44 In the present case, it has already been established that the Board of Appeal was correct in considering that the mark sought was descriptive in respect of the goods covered.
45 The Board of Appeal was therefore correct in finding that the mark sought had no distinctive character.
46 It follows from the foregoing that the second plea in law must also be rejected and that, consequently, the action must be dismissed in its entirety.
Costs
47 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Second Chamber),
hereby:
1. Dismisses the action.
2. Orders Ms Ino Karelia to pay the costs.
Delivered in open court in Luxembourg on 6 October 2017.