JUDGMENT OF THE GENERAL COURT (Second Chamber)
21 February 2024 (*)
(EU trade mark – Invalidity proceedings – EU word mark AMAZONIAN GIN COMPANY – Absolute ground for invalidity – Descriptive character – Article 7(1)(c) and Article 59(1)(a) of Regulation (EU) 2017/1001)
In Case T‑756/22,
Eric Roethig López, residing in Lluchmajor (Spain), represented by J. Carbonell Callicó and E. Felip Corrius, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
William Grant & Sons Irish Brands Ltd, established in Dublin (Ireland), represented by M. Borucka, lawyer,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, R. Norkus (Rapporteur) and W. Valasidis, Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 18 October 2023,
gives the following
Judgment
1 By his action under Article 263 TFEU, the applicant, Mr Eric Roethig López, seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 23 September 2022 (Case R 1978/2021-5) (‘the contested decision’).
Background to the dispute
2 On 18 September 2020, the intervener, William Grant & Sons Irish Brands Ltd, filed with EUIPO an application for a declaration of invalidity of the EU trade mark which had been registered following an application filed by the applicant on 11 September 2018 in respect of the word sign AMAZONIAN GIN COMPANY.
3 The goods covered by the contested mark were in Class 33 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 corresponded to the following description: ‘Gin; Alcoholic beverages based on gin’.
4 The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 59(1)(a), read in conjunction with Article 7(1)(a) to (c), of 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).
5 On 28 October 2021, the Cancellation Division rejected the application for a declaration of invalidity.
6 On 26 November 2021, the intervener filed a notice of appeal with EUIPO against the Cancellation Division’s decision.
7 By the contested decision, the Board of Appeal upheld the appeal on the ground that the contested mark was descriptive and therefore contrary to Article 7(1)(c) of Regulation 2017/1001. The Board of Appeal considered, in essence, that the English-speaking part of the relevant public would immediately and exclusively understand the contested mark as an indication that the registered alcoholic beverages or their ingredients were related to the region around the Amazon River.
Forms of order sought
8 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs, including those incurred in the proceedings before the Board of Appeal.
9 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
10 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
11 In support of his action, the applicant relies on a single plea in law, alleging infringement of Article 7(1)(c) of Regulation 2017/1001.
12 The applicant claims, in essence, that the Board of Appeal erred in concluding that the contested mark was descriptive with regard to the geographical origin of the goods.
13 In the first place, the applicant maintains that the contested mark is merely evocative and not descriptive. In addition, relying on an online dictionary, the applicant asserts that the term ‘amazonian’ does not indicate only geographical origin, but can also mean ‘(of a woman) tall, strong, or forceful’.
14 According to the applicant, the test arising from the case-law for assessing the descriptive nature of a term designating a geographical area is not satisfied. In that regard, first, he argues that the Amazon region is too large and vague an area for the public to be able to make a link between the goods at issue and a particular geographical point in that area. Second, the applicant argues that the Amazon region is not known for gin or beverages based on gin, such that it would therefore be impossible for the relevant public to establish a direct mental association between gin and that geographical region. Third, the applicant asserts that the relevant public will likewise not make such an association in the future, despite the fact that gin is becoming a very popular drink in Brazil.
15 In the second place, the applicant criticises the Board of Appeal for finding that the relevant public could link the botanicals constituting the ingredients of the gin and the Amazon region. In that regard, the applicant claims that it is impossible to identify a botanical product that may be found in a beverage such as gin with such adequacy that it is possible to establish a direct and sufficient link with the Amazon region.
16 According to the applicant, the Board of Appeal erred in assessing the evidence when it found that the botanicals contained in the gin originated from the Amazon area. After outlining, inter alia, the origin and exporting countries of each of the botanicals allegedly used in manufacturing the gin marketed under the contested mark, the applicant claims that those botanicals do not come from the Amazon region and that, therefore, the relevant public will not, ‘immediately and without further thought’, perceive the contested mark as describing the characteristics of the goods at issue.
17 Moreover, the Board of Appeal erred in taking into account the applicant’s marketing and commercial strategy, since such a strategy may serve merely to cause the consumer to evoke the Amazon region in general but cannot be regarded as descriptive of the goods at issue.
18 In the third and last place, the applicant argues that account should be taken of a particular factual context concerning relations with the intervener prior to the filing of the application for a declaration of invalidity.
19 EUIPO and the intervener dispute the applicant’s arguments. In addition, they raise a claim of inadmissibility with respect to Annexes A 13 to A 27 to the application, which contain information relating to the botanicals allegedly contained in the gin marketed under the contested mark or which may be contained in gin in general.
20 Article 7(1)(c) of Regulation 2017/1001 provides that 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, must not be registered. Under Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
21 Those signs or indications are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30).
22 A sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant persons have of it, on the other (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).
23 In order for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgments of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25 and the case-law cited).
24 The fact that the EU legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation 2017/1001 are merely those which serve to designate a property, easily recognisable by the relevant public, of the goods or the services in respect of which registration is sought. Accordingly, a sign can be refused registration on the basis of that provision only if it is reasonable to believe that it will actually be recognised by the relevant public as a description of one of those characteristics (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50, and of 3 July 2013, Airbus v OHIM (NEO), T‑236/12, EU:T:2013:343, paragraph 32).
25 Furthermore, although it is irrelevant whether such a characteristic is commercially essential or ancillary, a characteristic, within the meaning of Article 7(1)(c) of Regulation 2017/1001, must nevertheless be objective and inherent to the nature of the product or service and intrinsic and permanent with regard to that product or service (see judgment of 7 May 2019, Fissler v EUIPO (vita), T‑423/18, EU:T:2019:291, paragraph 44 and the case-law cited).
26 As regards, more particularly, signs or indications which may serve to designate the geographical origin of the categories of goods in respect of which registration of the mark is applied for, especially geographical names, it should be borne in mind that, under Article 7(1)(c) of Regulation 2017/1001, first, that the registration of geographical names as trade marks solely where they designate specified geographical locations which are already famous, or are known for the category of goods concerned, and which are therefore associated with those goods 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 geographical indications of the origin of the category of goods or services concerned (see, to that effect, judgment of 25 October 2005, Cloppenburg, T‑379/03, EU:T:2005:373, paragraphs 33 and 34 and the case-law cited).
27 However, Article 7(1)(c) of Regulation 2017/1001 does not in principle 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 concerned originates there or was conceived of there (see judgment of 25 October 2005, Cloppenburg, T‑379/03, EU:T:2005:373, paragraph 36 and the case-law cited).
28 Consequently, according to settled case-law, where a sign consists of a geographical name, 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 concerned, 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 judgment of 25 October 2005, Cloppenburg, T‑379/03, EU:T:2005:373, paragraph 38 and the case-law cited).
29 It is in the light of those considerations that it is necessary to assess the applicant’s argument that the Board of Appeal erred in finding that the mark applied for was descriptive, for the purposes of Article 7(1)(c) of Regulation 2017/1001.
The relevant public
30 The Board of Appeal found that the relevant public was the general public allowed to consume alcoholic beverages. It also found that the contested mark was meaningful in English and, consequently, it focused on the English-speaking public in the European Union. More specifically, the Board of Appeal limited its assessment to the general public in the Member States where English is an official language, namely Ireland and the Republic of Malta.
31 The applicant does not dispute the Board of Appeal’s assessments in that regard. Moreover, there is no evidence in the file capable of calling them into question.
The descriptive character of the contested mark in relation to the goods at issue
32 The Board of Appeal found that the contested mark consisted of three English words with a dictionary definition. The combination of those words in the form of the contested mark has a meaning and is a grammatically correct expression with no fanciful aspects.
33 In particular, the Board of Appeal found that the term ‘amazonian’ would be perceived by at least a non-negligible part of the relevant English-speaking public as relating to the area around the Amazon River, such as the Amazonian rainforest; that the term ‘gin’ referred to an alcoholic beverage made from distilled or redistilled neutral grain spirits, flavoured with juniper berries and aromatics; and that the term ‘company’ referred, inter alia, to a business organisation that made money by selling goods or services. In addition, according to the Board of Appeal, there is a direct link between the term ‘gin’ and the goods at issue.
34 The Board of Appeal therefore found that the contested mark, as a whole, was understood by at least a non-negligible part of the relevant English-speaking public as designating a business enterprise producing an alcoholic beverage, namely gin, related to the area around the Amazon River.
35 The applicant does not dispute the Board of Appeal’s assessments relating to the meaning of the three words forming the contested mark. He argues, however, that the term ‘amazonian’ may also be used to refer to ‘(of a woman) tall, strong, or forceful’ and that it therefore does not refer only to something that comes from the Amazon region. In any event, that term may only be evocative and not descriptive of the goods at issue. According to the applicant, since the Amazon region is not well known for the production of gin, it is unlikely that the relevant public will perceive that term as referring to the place of origin of that alcoholic beverage.
36 It should be observed that the three words which form the contested mark, namely ‘amazonian’, ‘gin’ and ‘company’, are part of the everyday vocabulary of the English language. In accordance with the grammatical rules of that language, the term ‘amazonian’, in a linguistic construction such as ‘Amazonian gin company’, is an adjective that qualifies the nouns ‘gin’ and ‘company’ and serves to indicate a quality or characteristic of that which is referred to by those latter terms.
37 As the Board of Appeal correctly found, the Amazon region, the territory to which the term ‘amazonian’ refers, is renowned as a very extensive region that is home to the largest rainforest in the world, which is particularly famous for the richness of its biodiversity and its enormous agricultural potential. Likewise, contrary to what the applicant claims, the Amazon region constitutes a well-defined geographical area, despite the fact that it extends over several countries, as is apparent, moreover, from the maps produced by the applicant in his observations submitted on 2 May 2022 to the adjudicating bodies of EUIPO and in paragraphs 69 to 71 of the application.
38 It is also apparent from the contested decision, which the applicant does not dispute, that juniper is the main botanical used in the manufacture of gin and that a wide variety of other botanicals may potentially be used in order to obtain an almost infinite range of flavours and thus of types of gin. Indeed, those botanicals are capable of giving gin a distinctive aroma and taste and are therefore relevant for the consumer’s choice. Moreover, as the applicant stated at the hearing, the specific taste of each type of gin is one of the characteristics that might determine the choice made by the consumer. Some of those botanicals may originate from the Amazon region, as is indeed the case with sacha inchi, a botanical whose Amazonian provenance is acknowledged by the applicant, as is its use for flavouring the gin marketed under the contested mark.
39 It must therefore be held that in view of the importance of botanicals in the manufacture of gin, their potential origin from the Amazon region, a territory that is well known for its countless botanical species, and the perception that the consumer might have that botanicals are the ingredients that give each gin its specific character, the contested mark enables the consumer to establish, immediately and without further thought, a connection between the Amazon region and the goods marketed under the contested mark.
40 Since the term ‘amazonian’, as employed in the contested mark, may evoke in the consumer’s mind the particular climatic conditions of the Amazon forest, the Board of Appeal did not err in also finding that that term was capable of conveying a positive image of the botanicals used to produce or flavour gin and, therefore, of the essential characteristics of gins and gin-based beverages, such as the taste. Consequently, the term ‘amazonian’ may describe not only the geographical origin of the goods at issue but also their quality.
41 Moreover, it is apparent from the Board of Appeal’s file that the gin marketed under the contested mark is described as containing many botanicals and spices from the Amazon region, or even that it is distilled there, and that the characteristics of those botanicals and spices are of relevance in the consumers’ purchasing choice. It is true, as the applicant submits, that the description of the goods at issue used for marketing purposes is not capable of rendering a mark descriptive which is otherwise not so. However, in the circumstances of the present case, those aspects of the applicant’s marketing strategy confirm the Board of Appeal’s findings concerning the descriptiveness of the contested mark. Furthermore, it is contradictory to present the goods at issue to consumers as being manufactured with botanicals from the Amazon region, or even as being distilled in that region, and to submit simultaneously that the AMAZONIAN GIN COMPANY trademark is not descriptive of the geographical origin of those goods.
42 In addition, although gin, as stated in paragraph 94 of the contested decision, is not a drink that has traditionally been produced in the Amazon region, it is now also being manufactured in countries in that region, such as Bolivia, Brazil and Venezuela. Consumers will therefore not be averse to the idea that a particular gin may originate from the Amazon region.
43 The Board of Appeal was therefore entitled to conclude, without erring, that the contested mark conveyed obvious and direct information regarding the kind, quality and geographical origin of the gins or their ingredients, such as botanicals. When a consumer encounters the sign AMAZONIAN GIN COMPANY in relation to gin and gin-based alcoholic beverages, he or she may associate the Amazon region with those beverages or their ingredients. The relevant public would therefore immediately understand the contested mark as an indication that the goods at issue or their ingredients are related to the Amazon region.
44 As regards the applicant’s assertion that the botanicals used for the manufacture of the gin marketed under the contested mark do not originate from agricultural crops from the Amazon region, that argument must be rejected as ineffective. As the applicant rightly submitted at the hearing, consumers are not necessarily aware of the exact composition of gin. Furthermore, even assuming that the botanicals used by the applicant for the manufacture of his gin do not originate from the Amazon region, it has already been stated in paragraph 38 above that there existed a wide variety of botanicals and spices, including from the Amazon region, that might be used in the manufacture or flavouring of gins. Consequently, an assessment of the exact composition of the gin marketed under the contested mark is irrelevant for the purposes of examining the descriptive character of the contested mark.
45 It is equally irrelevant whether there are other possible meanings of the term ‘amazonian’ given that a word sign must be refused registration under Article 7(1)(c) of Regulation 2017/1001 if at least one of its possible meanings designates a characteristic of the goods or services concerned (see, to that effect, judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32).
46 As regards the applicant’s argument that EUIPO has already registered other marks containing geographical names, it is sufficient to observe that, according to settled case-law, the decisions concerning registration of a sign as an EU trade mark which EUIPO is led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice of those boards (judgment of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47, and order of 11 February 2021, Klose v EUIPO, C‑600/20 P, not published, EU:C:2021:110, paragraph 21).
47 The applicant cannot therefore criticise the Board of Appeal for having based the contested decision on Regulation 2017/1001, as interpreted by the EU judicature, rather than on allegedly comparable decisions of the Boards of Appeal of EUIPO or the earlier practice of EUIPO in the registration of EU trade marks.
48 Moreover, for reasons of legal certainty and sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77, and of 9 March 2017, Maximum Play v EUIPO (MAXPLAY), T‑400/16, not published, EU:T:2017:152, paragraph 49).
49 Furthermore, as regards the applicant’s assertions concerning the factual context allegedly pertaining between him and the intervener prior to the filing of the application for a declaration of invalidity, it should be observed that those assertions do not contain any clear criticism of the contested decision. They are therefore of no relevance for the examination of the lawfulness of the contested decision.
50 In the light of all the foregoing considerations, the single plea in law must be rejected without it being necessary to assess the admissibility of Annexes A 13 to A 27 to the application.
51 Consequently, the action must be dismissed in its entirety.
Costs
52 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.
53 Since the applicant has been unsuccessful, he must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Mr Eric Roethig López to pay the costs.
Delivered in open court in Luxembourg on 21 February 2024.
V. Di Bucci | | S. Papasavvas |