(Case T‑122/17)
Devin AD
v
European Union Intellectual Property Office,
(EU trade mark — Cancellation proceeding — European Union word mark DEVIN — Absolute ground for refusal — Descriptive character — Geographical name — Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/1001))
Summary — Judgment of the General Court (Eighth Chamber), 25 October 2018
1. EU trade mark — Appeals procedure — Action before the EU judicature — Power of the General Court to alter the contested decision — Limits
(Council Regulation No 207/2009, Arts 64(1), second sentence, and 65(3))
2. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(c) of Regulation No 207/2009 — Concept
(Council Regulation No 207/2009, Art. 7(1)(c) and 52(1)(a))
3. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(c) of Regulation No 207/2009 — Assessment of the descriptive character of the trade mark — Geographical names
(Council Regulation No 207/2009, Art. 7(1)(c) and 52(1)(a))
4. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(c) of Regulation No 207/2009 — Assessment of the descriptive character of the trade mark — Geographical names — Criteria
(Council Regulation No 207/2009, Art. 7(1)(c) and 52(1)(a))
5. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(c) of Regulation No 207/2009 — Word mark DEVIN — perception of the word ‘devin’ by the average consumer in the European Union — Availability of the geographical name Devin
(Council Regulation No 207/2009, Art. 7(1)(c) and 52(1)(a))
6. EU trade mark — Effects of the EU trade mark — Limitations — Article 12(b) of Regulation No 207/2009 — Need to preserve availability — Effect
(Council Regulation No 207/2009, Arts 7(1)(c), and 12(b))
7. EU trade mark — Effects of the EU trade mark — Rights conferred by a trade mark — Right to prohibit the use of the mark — Sign used for identical or similar goods or services without due cause which takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark — Concept of due cause — Scope
(Council Regulation No 207/2009, Art. 9(2)(c))
1. See the text of the decision.
(see paras 11, 97-99)
2. See the text of the decision.
(see paras 17, 18)
3. See the text of the decision.
(see paras 20-22)
4. See the text of the decision.
(see paras 23, 24)
5. The word mark DEVIN is not descriptive of a geographical origin as regards the average consumer in the neighbouring countries of Bulgaria, namely Greece and Romania, nor that of the other Member States of the EU, with the only sole of Bulgaria.
While the geographical name Devin is known to the relevant class of persons in Bulgaria, as regards the relevant class of persons in the other Member States of the European Union, the geographical name Devin is largely unknown to them or, at the very least, unknown as a designation of a geographical place.
The mere fact that the town of Devin has a detectable presence on the internet cannot suffice to establish that it would be known by a significant part of the relevant public of Greece and Romania. However, the existence of a ‘tourist profile on the internet’, in itself, does not suffice to establish the knowledge of a small town by the relevant public abroad.
Above all, the average consumer of mineral water and beverages in the European Union does not have a high degree of specialisation in geography or tourism. The Board of Appeal, by wrongly focusing on foreign tourists, in particular Greeks or Romanians, who visit Bulgaria and Devin, did not take into consideration the entire relevant public, consisting of the average consumer of the European Union, in particular from Greece and Romania, but wrongly limited itself to a very small or minimal fraction of the relevant public, namely foreign tourists visiting Bulgaria or Devin, which in any case is negligible and cannot be held to be sufficiently representative given by the relevant public in the light of case-law. Accordingly, the Board of Appeal applied a wrong test, which led it to an incorrect factual assessment of the perception of the word ‘devin’ by the relevant public.
Concerning the availability of the geographical name Devin, it should be considered that a descriptive use of the name ‘Devin’ is permitted in order to promote the town as a tourist destination. Regulation No 207/2009 on the European Union trade mark provides, in the same definition of the exclusive right conferred by a trade mark, safeguards to protect the interests of third parties. The town of Devin remains available to third parties not only for descriptive use, such as the promotion of tourism in that town, but also as a distinctive sign in cases of ‘due cause’ and where there is no likelihood of confusion excluding the application of Articles 8 and 9 of Regulation No 207/2009. The general interest in preserving the availability of a geographical name such as that of the spa town of Devin can thus be protected by allowing descriptive uses of such names and by means of safeguards limiting the exclusive right of the proprietor of the contested mark, without requiring cancellation of that mark.
(see paras 39, 41, 46-48, 79, 83, 89, 90, 93, 95)
6. Article 12 of Regulation No 207/2009 on the European Union trade mark seeks to reconcile the fundamental interests of trade mark protection with those of free movement of goods and freedom to provide services in the internal market in such a way that trade mark rights are able to fulfil their essential role in the system of undistorted competition which the Treaty on the Functioning of the European Union seeks to establish and maintain. Specifically, Article 12(b) of that directive seeks to ensure that all economic operators have the opportunity to use descriptive indications. That provision therefore gives expression to the requirement of availability. However, the requirement of availability can under no circumstances constitute an independent restriction of the effects of the trade mark in addition to those expressly provided for in that article. Accordingly, even though Article 12(1)(b) does not confer on third parties the right to use the name as a trade mark, but merely guarantees their right to use it descriptively, that is to say, as an indication of geographical origin, provided that it is used in accordance with honest practices in industrial or commercial matters.
(see paras 76-78)
7. See the text of the decision.
(see paras 87, 88)