JUDGMENT OF THE GENERAL COURT (Second Chamber)
5 November 2019 (*)
(EU trade mark — Invalidity proceedings — EU figurative mark SIR BASMATI RICE — Absolute ground for refusal — Descriptive character — Article 7(1)(c) of Regulation (EU) 2017/1001)
In Case T‑361/18,
Agricultural and Processed Food Products Export Development Authority (APEDA), established in New Delhi (India), represented by N. Dontas, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Capostagno, J. Ivanauskas and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Burraq Travel & Tours General Tourism Office SA, established in Athens (Greece),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 22 March 2018 (Case R 90/2017-2), relating to invalidity proceedings between APEDA and Burraq Travel & Tours General Tourism Office,
THE GENERAL COURT (Second Chamber),
composed E. Buttigieg (Rapporteur), acting as President, F. Schalin and M. J. Costeira, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 8 June 2018,
having regard to the response lodged at the Court Registry on 13 August 2018,
further to the hearing on 28 June 2019,
gives the following
Judgment
Background to the dispute
1 On 22 July 2014, the other party to the proceedings before the Board of Appeal of the European Union Intellectual Property Office (EUIPO), Burraq Travel & Tours General Tourism Office SA (‘the trade mark proprietor’), filed an application for registration of an EU trade mark with EUIPO pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (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 following figurative sign:
3 The goods in respect of which Community registration was sought are in Classes 30, 31 and 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 correspond to the following description for each of those classes:
– Class 30: ‘Rice; Husked rice; Creamed rice; Fried rice; Cooked rice; Rice; Prepared rice; Rice biscuits; Rice biscuits; Rice mixes; Rice crisps; Rice salad; Rice crackers; Rice cakes; Rice sticks; Rice tapioca; Rice cakes; Foodstuffs made of rice; Steamed rice; Dried cooked-rice; Sauces for rice; Wild rice [prepared]; Wholemeal rice; Frozen prepared rice; Natural rice flakes; Rice crisps; Rice crackers [senbei]; Artificial rice [uncooked]; Asian noodles; Flavoured rices; Rice-based snack food; Enriched rice [uncooked]; Prepared rice dishes; Stir fried rice cake [topokki]; Rice starch flour; Pelletshaped rice crackers (arare); Breakfast cereals made of rice; Sago; Frozen prepared rice with seasonings; Pounded rice cakes (mochi); Extruded food products made of rice; Korean traditional rice cake [injeolmi]; Rice cake snacks; Prepared meals containing [principally] rice; Rice-based snack food; Rice-based snack food; Meals consisting primarily of rice; Rice based dishes; Rice-based pudding dessert; Half-moon-shaped rice cake [songpyeon]; Chinese rice noodles (bifun, uncooked); Soft pin-rolled cakes of pounded rice (gyuhi); Rice-based snack food; Sweet pounded rice cakes (mochi-gashi); Milled rice for human consumption; Frozen prepared rice with seasonings and vegetables; Kheer mix (rice pudding); Rice mixed with vegetables and beef [bibimbap]; Cakes of sugar-bounded millet or popped rice (okoshi); Flour for making dumplings of glutinous rice; Natural rice [processed] for food for human consumption; Sliced rice cake soup [tteokguk]; Rice dumplings dressed with sweet bean jam (ankoro); Dry and liquid ready-to-serve meals, mainly consisting of rice; Dry and liquid ready-to-serve meals, mainly consisting of pasta; Pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables’;
– Class 31: ‘Unprocessed rice; Paddy; Unprocessed rice; Unprocessed rice; Rice bran [animal feed]; Natural rice for use as animal fodder’;
– Class 33: ‘Rice alcohol; Rice alcohol’.
4 The mark at issue was registered on 20 January 2015 under number 13102454.
5 On 28 July 2015, the applicant, Agricultural and Processed Food Products Export Development Authority (APEDA), filed an application for a declaration of invalidity of the registered mark reproduced in paragraph 2 above for all of the goods covered by that mark, relying on (i) the absolute grounds of invalidity laid down in Article 7(1)(c) and (g) of Regulation No 207/2009 (now Article 7(1)(c) and (g) of Regulation 2017/1001), read in conjunction with Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001), and (ii) the absolute ground of invalidity referred to in Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001), claiming that the trade mark proprietor had acted in bad faith by filing its application for registration.
6 By decision of 25 November 2016, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.
7 On 13 January 2017, the applicant filed a notice of appeal against the decision of the Cancellation Division, pursuant to Articles 58 to and 60 of Regulation No 207/2009 (now Articles 66 to 68 of Regulation 2017/1001).
8 By decision of 22 March 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO (i) annulled the decision of the Cancellation Division in so far as it had refused to declare the mark at issue invalid for the goods ‘sago’ and ‘artificial rice [uncooked]’ in Class 30; (ii) accordingly, declared the mark at issue invalid for those goods; and (iii) dismissed the appeal as to the remainder.
9 As regards, in the first place, the descriptive character of the mark at issue, after noting that the relevant date for determining whether a mark was registered in infringement of Article 7(1)(c) of Regulation 2017/1001 was the date on which the application for registration was filed — specifically, 22 July 2014 — the Board of Appeal found, in essence, that (i) the applicant’s argument that the word ‘basmati’ was an officially recognised geographical indication issued to the Basmati variety of rice grown in seven States in the Indo Gangetic Plain lying below the Himalayas, was not relevant in the present case in so far as the application for a declaration of invalidity was not based on Article 7(1)(j) or (k) of Regulation 2017/1001, and that the only important question was whether the relevant consumers associated that word with a given region in Asia known for rice production; (ii) the applicant had failed to provide any evidence to establish that the general public was aware of the fact that the word ‘basmati’ had recently been registered as a ‘geographical indication’ in India; (iii) instead, the target public perceived the word ‘basmati’ simply as a type of savoury rice; and (iv) even though the words ‘basmati’ and ‘rice’ visible in the mark at issue lacked distinctive character for the goods in question (the vast majority of which were rice or contained rice) in so far as Basmati rice was a variety of rice that was well known to the public in the European Union, the mark was not simply composed of the words ‘sir’, ‘basmati’ and ‘rice’, but of a relatively complex whole containing word, geometric, coloured and figurative elements which, taken together, undeniably had distinctive character compensating for and dominating the aforementioned words. Accordingly, the Board of Appeal found that the mark at issue was not composed ‘exclusively’ of signs which indicate the goods, their quality or their characteristics, and that the applicant’s claim that the presence of the element ‘basmati’ created a ‘descriptive spill-over effect’ cancelling out any distinctive character was unfounded.
10 As regards, in the second place, the allegedly deceptive character of the mark at issue, the Board of Appeal found, first, that (i) the mark at issue designated rice, goods containing rice amongst their ingredients or rice-based beverages; (ii) that mark could be used in a non-misleading way in respect of goods containing or including Basmati rice; (iii) although, in its list of products for which protection was claimed, the rice-based goods were not described as ‘Basmati’, that did not mean that the trade mark proprietor did not intend to use Basmati rice or that it intended to use a variety of rice other than Basmati; and (iv) if the trade mark proprietor used its mark solely for Basmati rice — which was its right and also undoubtedly its honest commercial intention — there could obviously not be any ‘serious risk of deception’. Secondly, the Board found that ‘any surrounding circumstances … such as the current use’ of the mark at issue was irrelevant to the assessment under Article 7(1)(g) of Regulation 2017/1001 so that, even if the trade mark proprietor were dishonest and sold rice other than Basmati rice — which had not, however, been claimed — that would not justify the rejection of the mark for rice and rice-based goods pursuant to that provision. Lastly, the Board found that, as regards ‘sago’ and ‘artificial rice [uncooked]’, it was obvious that there would necessarily be such deception, since those goods were not only not made of Basmati rice, but they were not even made of rice. Accordingly, the Board of Appeal annulled the decision of the Cancellation Division in so far as it had dismissed the application for a declaration of invalidity with regard to ‘sago’ and ‘artificial rice [uncooked]’.
11 As to, in the third place, the allegation of bad faith on the part of the trade mark proprietor, the Board of Appeal found that there was no law preventing the trade mark proprietor from using the generic words ‘basmati’ and ‘rice’ in its sign, and that there was no reason for accusing it of acting in ‘bad faith’, within the meaning of Article 59(1)(b) of Regulation 2017/1001, when it had merely registered a complex figurative mark containing generic words, and sought neither to monopolise the words at issue, nor block the commercial activity of another trader, nor register a mark that was identical or similar to a mark held by the applicant. Consequently, according to the Board of Appeal, the decision of the Cancellation Division was to be upheld on that point, in so far as it had found no trace of dishonest intention in any shape or form, including in the light of the commercial logic behind the filing of the application for registration.
Forms of order sought
12 The applicant claims that the General Court should:
– annul the contested decision, except in so far as it concerns ‘sago’ and ‘artificial rice [uncooked]’ covered by the mark at issue in Class 30;
– declare the mark at issue invalid in its entirety; and
– order EUIPO to pay the costs incurred by the applicant in the course of the proceedings before the General Court, the Board of Appeal and the Cancellation Division of EUIPO.
13 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Admissibility of certain annexes to the application
14 EUIPO claims, as a preliminary point, that Annex A.5 and Annexes A.23 to A.25 should be declared inadmissible in so far as they were produced for the first time before the General Court.
15 As regards, in the first place, Annex A.5, it should be observed that this was submitted to the General Court in order to demonstrate that the geographical indication Basmati had been registered in India with the Geographical Indications Registry. It must be held that that annex was previously submitted as an annex to the applicant’s observations, dated 30 March 2016, in response to the trade mark proprietor’s observations of 15 January 2016, which were sent to the Cancellation Division. That was noted, moreover, by the Board of Appeal in paragraph 7 of the contested decision, since it is stated therein that ‘in response to the [trade mark proprietor]’s submission, the cancellation applicant filed the following observations: “Basmati” was recently registered … as a geographical indication in India. This is confirmed by the copy of the registration certificate filed with the submission’. It is therefore clear that, contrary to EUIPO’s claim, Annex A.5 was not produced for the first time before the General Court and that, consequently, it is admissible.
16 As regards, in the second place, Annexes A.23 to A.25, they were submitted by the applicant in support of the third plea and contain a number of excerpts from websites, dated 28 and 29 May 2018.
17 In that regard, it must be noted that the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO within the meaning of Article 72 of Regulation 2017/1001. It follows that the Court cannot re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. Indeed, the legality of a decision of a Board of Appeal of EUIPO must be assessed in the light of the information available to it when it adopted that decision (see judgment of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO, C‑471/16 P, not published, EU:C:2017:602, paragraphs 24 and 25).
18 As the applicant accepted in response to a question from the Court at the hearing, the evidence submitted in Annexes A.23 to A.25 was produced for the first time before the General Court. That evidence cannot, therefore, be taken into consideration for the purposes of the Court’s assessment of the validity of the contested decision (see, to that effect, judgment of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO, C‑471/16 P, not published, EU:C:2017:602, paragraphs 26 and 27).
The application seeking annulment of the contested decision
19 In support of its action, the applicant submits four pleas in law alleging, respectively, (i) infringement of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(g) of that regulation; (ii) infringement of Article 59(1)(b) of Regulation 2017/1001; (iii) infringement of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(c) of that regulation; and (iv) infringement of Article 94(1) of that regulation.
20 It is appropriate to examine, first of all, the third plea in law alleging infringement of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(c) of that regulation.
21 The applicant maintains, in essence, that the Board of Appeal erred in considering that the mark at issue was not descriptive of the goods in question, within the meaning of Article 7(1)(c) of Regulation 2017/1001, by wrongly finding that the elements making up the sign at issue, in their overall combination, were distinctive. It is argued that those elements, in so far as they are usual, decorative or descriptive, cannot in fact confer the required degree of distinctive character on the mark at issue.
22 In that connection, the applicant observes, first, that the reputed geographical indication ‘Basmati’ is the dominant element of the mark at issue and therefore immediately holds the attention of the average consumer. Consequently, the presence of the word ‘basmati’ as the dominant element, which describes the geographical origin and traditional character of the goods designated by the mark at issue, makes the other word and figurative elements of the mark at issue descriptive, by cancelling out any distinctive character.
23 The applicant observes, secondly, that it is a well-known fact that Basmati rice comes from India and Pakistan, and that the style of turban and specific outfit worn by the turbaned man make clear reference to India and Pakistan. In those circumstances, the use of the word ‘basmati’ and of the portrait of the turbaned man in the mark at issue implies that the trade mark proprietor was aware, in respect of the goods covered by the mark at issue, of the geographical meaning of those elements, which are descriptive and have striking geographical connotations — for example in the United Kingdom — when they are used to designate Basmati rice. It is argued that the evidence adduced during the proceedings before EUIPO supports the claims relating to the Indian and Pakistani origins of the word ‘basmati’, the geographical connotation of the image of the turbaned man, and knowledge of the Indian subcontinent on the part of consumers in the European Union. Lastly, it is claimed that the word ‘sir’ merely corroborates the descriptive character of the mark.
24 EUIPO concurs with the reasons for the contested decision and contends that the applicant’s arguments are based on a fragmented and isolated examination of each element making up the sign at issue, whereas the latter sign ought to be contemplated as a whole, having regard to all of its word, graphical, coloured and figurative elements. It is argued that only indications which are purely and directly descriptive are subject to the grounds for refusal set out in Article 7(1)(c) of Regulation 2017/1001, as follows from the word ‘exclusively’ contained in that provision. By contrast, when the descriptive content of the indication is neither clear nor unequivocal, but instead is imprecise and open to different interpretations, there is generally no obstacle to the registration of the mark. In that connection, EUIPO observes that, despite the presence of the two descriptive words ‘basmati’ and ‘rice’ and the potentially evocative word ‘sir’, the mark at issue cannot be considered to be ‘exclusively’ descriptive, since it possesses a decisive distinctive element — namely, the depiction of the turbaned man — and consequently does not constitute a simple description of any specific and precise characteristic of the goods concerned, and has no immediate and descriptive meaning in the context of such goods. Ultimately, the applicant has not shown that the relevant public will perceive the sign in itself as being exclusively descriptive.
25 As a preliminary point, it should be recalled that, under Article 7(1)(c) of Regulation 2017/1001, 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. Thus, signs or indications which may serve, in trade, to designate the characteristics of the goods or service in respect of which registration is sought are, pursuant to Regulation 2017/1001, deemed incapable, by their very nature, of fulfilling the indication-of-origin function of the trade mark.
26 By prohibiting the registration as EU trade marks of such signs and indications, Article 7(1)(c) of Regulation No 2017/1001 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 14 July 2017, Klassisk Investment v EUIPO (CLASSIC FINE FOODS), T‑194/16, not published, EU:T:2017:498, paragraph 18 and the case-law cited).
27 In addition, it follows from Article 7(2) of Regulation No 2017/2009 that it is sufficient that the grounds of non-registrability obtain in only part of the European Union. Accordingly, a sign is to be refused registration where it is descriptive or is not distinctive in the language of one Member State, even if it is registrable in another Member State (see judgment of 14 July 2017, CLASSIC FINE FOODS, T‑194/16, not published, EU:T:2017:498, paragraph 19 and the case-law cited).
28 However, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 2017/1001, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment of 14 July 2017, CLASSIC FINE FOODS, T‑194/16, not published, EU:T:2017:498, paragraph 20 and the case-law cited).
29 In that regard, it must be stated that the fact that the 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 class of persons, of the goods or the services in respect of which registration is sought. Thus, a sign can be refused registration on the basis of Article 7(1)(c) of Regulation No 2017/1001 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see judgment of 14 July 2017, CLASSIC FINE FOODS, T‑194/16, not published, EU:T:2017:498, paragraph 21 and the case-law cited).
30 Consequently, the assessment of the descriptive character of a sign cannot be carried out except, first, in relation to the perception which the public concerned has of that sign and, second, in relation to the goods or services covered (see judgment of 14 July 2017, CLASSIC FINE FOODS, T‑194/16, not published, EU:T:2017:498, paragraph 22 and the case-law cited).
31 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 judgment of 6 October 2017, Karelia v EUIPO (KARELIA), T‑878/16, not published, EU:T:2017:702, paragraph 15 and the case-law cited).
32 First, the registration of geographical names as trade marks where they designate specified geographical locations which are already famous or 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 is, second, 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 judgment of 6 October 2017, KARELIA, T‑878/16, not published, EU:T:2017:702, paragraph 16 and the case-law cited).
33 However, it must be noted that, in principle, Article 7(1)(c) of Regulation No 2017/1001 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 judgment of 6 October 2017, KARELIA, T‑878/16, not published, EU:T:2017:702, paragraph 17 and the case-law cited).
34 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. Furthermore, 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 6 October 2017, KARELIA, T‑878/16, not published, EU:T:2017:702, paragraph 19 and the case-law cited).
35 The Court has also held that it is irrelevant whether there are other more usual signs or indications for designating the same characteristics of the goods or services referred to in the application for registration than those of which the mark concerned consists. Although Article 7(1)(c) of Regulation 2017/1001 provides that, if the ground for refusal set out there is to apply, the mark must consist ‘exclusively’ of signs or indications which may serve to designate characteristics of the goods or services concerned, it does not require that those signs or indications should be the only way of designating such characteristics (see, by analogy, judgment of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 57).
36 Furthermore, as regards marks composed of several word and figurative elements, it must be borne in mind that, in order to assess the descriptive character of a compound mark, not only must the various elements of which it is composed be examined but also the mark as a whole, so that such an assessment must be based on the overall perception of that trade mark by the relevant public (see judgment of 14 July 2017, CLASSIC FINE FOODS, T‑194/16, not published, EU:T:2017:498, paragraph 23 and the case-law cited).
37 Lastly, in order for EUIPO to refuse registration of a trade mark on the basis of Article 7(1)(c) of Regulation No 2017/1001, 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. A sign must therefore be refused registration under that provision 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).
38 This plea in law, alleging infringement of Article 7(1)(c) of Regulation No 2017/1001, must therefore be examined in the light of those principles.
39 In the first place, as regards the relevant public, it should be noted that the Board of Appeal referred generally, in paragraph 36 of the contested decision, to ‘the general public of the European Union’ — described as generally having only little detailed knowledge of the geography of Pakistan or Northern India — without distancing itself, moreover, from the Cancellation Division’s assessment that, on account of the fact that the goods covered by the mark at issue were inexpensive mass consumption goods, and that the mark at issue contained English word elements, the relevant public consisted of the English-speaking general public, particularly in Ireland, Malta and the United Kingdom, displaying an average or slightly below-average level of attention. Those assessments, which were not disputed before the Court, must be upheld.
40 In the second place, it should be recalled that, for the purpose of the application of Article 7(1)(c) of Regulation No 2017/1001, it is necessary to consider, on the basis of a given meaning of the word sign at issue, whether, from the point of view of the intended public, there is a sufficiently direct and specific relationship between the sign at issue and the goods in respect of which registration is sought (see, to that effect, judgment of 13 November 2008, Duro Sweden v OHIM (EASYCOVER), T‑346/07, not published, EU:T:2008:496, paragraph 39 and the case-law cited).
41 As regards the meaning of the word elements ‘basmati’ and ‘rice’, the Board of Appeal considered, in paragraph 37 of the contested decision, that although the word ‘basmati’ might not designate a region of India and Pakistan for the production of rice — at least not in the eyes of the relevant public — Basmati rice was ‘a variety of popular long-grain rice used in savoury dishes’ and ‘well known to the European public’. The Board of Appeal concluded, in the same paragraph of the contested decision, that the words ‘basmati’ and ‘rice’ visible in the mark at issue were not distinctive for the goods in question, the overwhelming majority of which were either rice or contained rice. The latter finding, which was not disputed before the Court, must be upheld.
42 In paragraphs 42 to 44 of the contested decision, the Board of Appeal added that although the relevant public would not understand the word ‘basmati’ as designating the nature of the goods in question, and although the mere addition of the word ‘sir’ to the words ‘basmati’ and ‘rice’ would not suggest that the goods covered by the mark at issue were of ‘fine quality’ and did not reinforce the distinctive character of that mark, the latter was nevertheless the result of an overall assessment of a ‘relatively complex whole displaying verbal, geometrical, colours and figurative features which, taken as a whole, [was] undeniably distinctive’.
43 In that connection, the Board of Appeal observed, inter alia, in paragraph 32 of the contested decision, that the mark at issue was a complex visual structure, consisting in coloured elements, geometrical features and the fanciful portrait of a turbaned man, whose head and shoulders were set in a bordered circular frame. The man sported a carefully trimmed beard and moustache and a red turban with an orange triangular element. The fabric that covered the man’s neck and shoulders reflected the same colour scheme, whereas the words ‘sir’ and ‘basmati’ surmounting the oval frame, the sides of which were adorned with a rolling pattern, were depicted in red and, at the base of the sign, the word ‘rice’ appeared on a gold label.
44 In paragraphs 39 and 40 of the contested decision, the Board of Appeal stated that although the mark at issue contained the non-distinctive words ‘basmati’ and ‘rice’ which, read in conjunction, designated a particular variety of savoury rice, those generic words were not the dominant elements of the mark, but were outweighed by the fanciful portrait of an turbaned man in a circular frame together with other decorative and stylistic effects, namely the pink curls around the perimeter and a yellow label with a three-dimensional shadow effect.
45 As to the portrait of the turbaned man, the Board of Appeal noted, in paragraphs 39 and 40 of the contested decision, that it was fanciful and more of a cartoon depiction than a living person, that the bust was a decisive distinctive element and that it suggested an inhabitant of an oriental country, but no more than that, since wearing turbans was common among certain religious groups in different parts of the world. The Board thereby inferred, in paragraph 42 of the contested decision, that there was no direct or clear link between the portrait of a turbaned man and the rice-based goods covered by the mark at issue.
46 Lastly, in paragraph 39 of the contested decision, the Board of Appeal observed that when the mark at issue was perceived in all its diversity of components, it was clear that it did not consist exclusively of signs which indicated anything about the goods or their characteristics. The Board went on to find, in paragraph 48 of that decision, that the registration of that mark was not contrary to Article 7(1)(c) of Regulation 2017/1001, since it was not composed ‘exclusively’ of signs which indicated the goods, their quality or characteristics.
47 It follows from those considerations that, as EUIPO rightly observes, the Board of Appeal (i) accepted that the words ‘basmati’ and ‘rice’ had no distinctive character and referred directly, from the perspective of the relevant public, to a particular variety of savoury rice that was well known to that public; and (ii) found that the figurative element representing a man wearing a turban was a decisive distinctive element and did serve to suggest an exclusive link with India in the eyes of the relevant public. On the basis of the various verbal, graphical, coloured and figurative elements of the sign at issue, the Board of Appeal found that there was not, inherently, a sufficiently direct relationship between the mark at issue and the goods in question for the registration of that mark to be contrary to Article 7(1)(c) of Regulation 2017/1001.
48 In support of the present plea, the applicant claims, more specifically, that the word ‘basmati’ is a reputed geographical indication and that the relevant public perceives that word as a descriptive element which corroborates the ‘geographical’ origins of the designated goods. It is argued that it is an undisputed, well-known fact that Basmati rice comes from India or Pakistan. The evidence produced during the procedure before EUIPO supports the claims relating to the Indian and Pakistani origins of the word ‘basmati’ and knowledge of the Indian subcontinent on the part of consumers in the European Union.
49 In that connection, it should be observed that it is apparent, in particular, from the excerpts from English dictionaries and food guides contained in Annexes A.7 and A.13 to the application that the word ‘basmati’ is commonly considered to designate a variety of rice from India in particular. Consequently, while the Board of Appeal was entitled to find, in paragraph 37 of the contested decision, that the word ‘basmati’ referred directly to the nature of the goods covered by the mark at issue — which, with the exception of sago and uncooked artificial rice, were either rice or contained rice — that word also refers, even in the eyes of the relevant public, to the geographical origins of the goods in question, since it is well known that Basmati rice is grown, in particular, in India. By contrast, it is mentioned only once in the aforementioned excerpts that Basmati rice is also grown in Pakistan. Accordingly, it should be noted from the outset that the fact that Basmati rice comes from India is more widely known than the fact that it also comes from Pakistan; as a result, the applicant’s claim that it is an undisputed, well-known fact that Basmati rice also comes from Pakistan is not sufficiently substantiated.
50 Next, while it is admittedly mentioned, in particular in the excerpts from the dictionaries and food guides referred to in paragraph 49 above, that Basmati rice comes from India, the fact remains that that word does not refer directly, per se, to India. In the aforementioned excerpts, the word ‘basmati’ refers, in most cases, to the phrase ‘basmati rice’, which means that the word ‘basmati’ refers primarily to a variety of rice, as was noted in the contested decision. Moreover, the word ‘basmati’ is a Hindi word which literally means ‘fragrant’. It therefore does not denote a specific geographical name, but a variety of rice from a specific region of the world. The relevant public thus perceives the word ‘basmati’ as referring to India as a geographical name only indirectly.
51 It should also be noted that the alleged fact that the word ‘basmati’ has been ‘registered’ in the interim as a geographical indication in India is also not decisive. In that regard, the Board of Appeal rightly observed, in paragraph 35 of the contested decision, that the applicant had not relied on Article 7(1)(j) of Regulation 2017/1001 in support of its application for a declaration of invalidity. In addition, and as the Board of Appeal again rightly observed in paragraph 36 of the contested decision, the applicant has failed to produce any evidence demonstrating that the relevant public was aware of the alleged registration of the word ‘basmati’ as a geographical indication, which, moreover, occurred after the relevant date as noted in paragraph 9 above. Consequently, it appears to be unlikely — and has not, in any event, been demonstrated to the requisite legal standard — that the relevant public associates the word ‘basmati’ with a ‘reputed geographical indication’, contrary to the applicant’s claim.
52 In the light of the foregoing considerations, it must be found, contrary to the argument put forward by the applicant, that it is not apparent to the requisite legal standard that the relevant public will understand the word ‘basmati’ as referring to ‘geographical names’ where Basmati rice comes from, in the present case, India and Pakistan. None of the evidence produced by the applicant, specifically Annexes A.6 to A.18, is such as to call that finding into question. By contrast, it is common ground at least that, as the Board of Appeal noted in paragraph 37 of the contested decision, the relevant public is perfectly capable of understanding the word ‘basmati’ as referring to a specific variety of popular long-grain rice used in savoury dishes.
53 As the Board of Appeal rightly found in paragraphs 37, 39 and 43 of the contested decision, the words ‘basmati’ and ‘rice’ are directly descriptive of the ‘nature’ of the goods designated by the mark at issue, in so far as those words refer to a popular variety of rice that is well known to the relevant public, and as the goods covered by the mark at issue actually are, or contain, rice.
54 It should be added that, as observed in paragraph 36 above, as regards marks composed of several word and figurative elements, in order to assess the descriptive character of a compound mark, not only must the various elements of which it is composed be examined but also the mark as a whole, so that such an assessment must be based on the overall perception of that trade mark by the relevant public (judgment of 14 July 2017, CLASSIC FINE FOODS, T‑194/16, not published, EU:T:2017:498, paragraph 23 and the case-law cited).
55 In that connection, the applicant claims that, contrary to the contested decision, the depiction of the turbaned man is also descriptive of the origin of the goods designated by the mark at issue.
56 The applicant takes the view that it has already been established, on the basis of well-known facts, that the turban and specific outfit worn by the man in question clearly refer to India or Pakistan, where Basmati rice comes from, and that the relevant public is aware of that circumstance. It is argued that it is a well-known fact that the style of the turban worn by the man in the image of the mark at issue is typical of the style of turban worn by male members of the Sikh community in Punjab, part of the region Basmati rice comes from. Similarly, it is claimed that the outfit worn by the man in question corresponds to traditional outfits worn by men in Pakistan and India.
57 It should be noted, first, that, as recalled in paragraph 40 of the contested decision, turbans are commonly worn, in particular, amongst certain religious groups in Arabia, Africa, Asia and the Far East. Consequently, although, as the applicant maintains, that distinctive headdress is typical of Sikhs in Punjab, it is clear that turbans are not worn solely by those groups of persons. It is therefore not possible to establish an exclusive link between the wearing of turbans and India.
58 Secondly, as to the argument based on the circumstance that the population of Pakistani and Indian origin represents over 6.2% of the total population of the United Kingdom as at 2011 — as is apparent, inter alia, from Annex A.27 to the application — with the result that a part of the relevant public is aware of the traditional turbans worn by the Sikh community in Punjab, it is clear that the applicant has failed to demonstrate that the public that is aware of the traditional turbans worn by the Sikh community in Punjab represents a not insignificant part of the relevant public.
59 Accordingly, the applicant’s claim that the relevant public is capable of clearly recognising the turban worn by the man in the mark at issue as a turban worn by the Sikh community in Punjab, in the region where Basmati rice is grown, and will therefore make a direct link with India or Pakistan, is not sufficiently substantiated. The same can be said, a fortiori, with regard to the specific outfit worn by the man in the mark at issue which, according to the applicant, refers back to the traditional outfits worn by men in India and Pakistan.
60 In the light of the foregoing, it has been established to the requisite legal standard that the relevant public perceives the figurative element of the mark at issue, more specifically the depiction of the turbaned man, as suggesting an inhabitant of an oriental country, as the Board of Appeal noted in paragraph 40 of the contested decision, without suggesting an exclusive link with India or Pakistan.
61 However, contrary to the Board of Appeal’s findings and EUIPO’s claims before the General Court, it does not follow from those considerations that the figurative element of the mark at issue gives rise to uncertainty as to the meaning of the word elements of that mark, as noted in paragraphs 41 and 52 above, or that the combination of the word and figurative elements of the mark at issue precludes the finding that that mark is also, in its overall perception, perceived immediately and without further thought as being not only non-distinctive but also descriptive of the goods in question.
62 As noted in paragraph 60 above, the figurative element comprises, inter alia, the representation of a man wearing a turban; it is common ground that that suggests, at the very least, an inhabitant of an oriental country. Although, in those circumstances, it would be an exaggeration to assume that, for the relevant public, the turbaned man suggests an ‘exclusive’ link with India, not to mention a particular region in India, that fact does not, however, preclude the finding that the mark at issue is also, in its overall perception, perceived immediately and without further thought as being descriptive of the goods in question to the extent that they relate to a variety of popular long-grain rice which is well known to the relevant public.
63 As the applicant rightly observes, the alleged ‘complexity’ of the mark at issue is the result, more particularly, of various ‘usual or decorative’ elements which were wrongly found to confer the required degree of distinctive character on that mark.
64 Neither the representation of a turbaned man nor the purely decorative elements noted in paragraph 43 above, taken as a whole, provides an additional characteristic to the mark at issue in the present case. In particular, the figurative element composed of the representation of a turbaned man, regardless of its size, does not entail dominance conferring distinctive character on the mark at issue, contrary to the Board of Appeal’s findings in paragraphs 39 and 40 of the contested decision.
65 On the contrary, as regards goods from a specific region in the world, that representation simply reinforces the descriptive meaning of the word elements of the mark at issue, in so far as it refers to a particular type of rice which, contrary to the contested decision, is known to be grown in India, as noted in paragraphs 49 and 50 above. It therefore does not elicit particular thought, on the part of the target public, in interpreting that representation.
66 The graphical representation is therefore perceived — besides, in part, as a mere decoration — essentially as not diverting the attention of the relevant public away from the descriptive meaning of the word elements taken as a whole, and more specifically from the clear descriptive message communicated by those elements, which that representation ultimately only reinforces in the absence of any eye-catching, noticeable or memorable distinctive element (see, to that effect, judgment of 14 July 2017, CLASSIC FINE FOODS, T‑194/16, not published, EU:T:2017:498, paragraph 33).
67 Such a presentation of different word elements of a sign around a graphical representation is, in fact, not unusual and does not prevent an informed public from correctly reading the phrase ‘sir basmati rice’. More particularly, the graphical configuration at issue does not prevent the relevant public from easily recognising, adjacent to the word ‘sir’, the word ‘basmati’ which sits above the representation of the turbaned man in the middle, whereas the word ‘rice’ is reproduced, also in the middle underneath that representation. This is particularly the case as those words are reproduced in capital letters and in a font size that is proportionally large compared to the size of the representation of the turbaned man. Lastly, it is not disputed that — as, moreover, the Board of Appeal rightly accepted — the word ‘sir’ is not such as to confer any notable degree of distinctive character on the mark at issue, either in isolation or considered in the overall impression created by that mark.
68 The circumstance noted by the Board of Appeal, according to which the representation of the turbaned man can have different meanings, is irrelevant in the assessment of the descriptive character of the mark at issue, in so far as, as is clear from the case-law recalled in paragraph 37 above, it is sufficient that the sign be descriptive in at least one of its potential meanings for it to be refused registration.
69 Finally, the possibility that a part of the relevant public does not recognise, in the representation of a turbaned man, the descriptive message conveyed by the word elements of the mark at issue, whilst not excluded, does not preclude the finding of the existence of the ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001, in so far as it is sufficient that that ground for refusal exists at least for a not insignificant part of the public targeted (see, to that effect, judgments of 6 October 2017, KARELIA, T‑878/16, not published, EU:T:2017:702, paragraph 27, and of 11 October 2017, Osho Lotus Commune v EUIPO — Osho International Foundation (OSHO), T‑670/15, not published, EU:T:2017:716, paragraph 88). This is the case here, particularly since, as noted inter alia in paragraph 49 above, it is widely known to the general public that Basmati rice is grown in India, where that distinctive headdress is typically worn, as is also apparent from paragraph 40 of the contested decision and as EUIPO accepts.
70 The Board of Appeal therefore erred in its assessment by finding that, with regard to the relevant public, the overall impression created by the combination of the word elements and the figurative element of the sign at issue was sufficiently removed from the clear and descriptive message, conveyed by the word elements, to overcome the ground for refusal referred to in Article 7(1)(c) of Regulation 2017/2002 in so far as concerns the goods in question, whereas it is clear from the preceding considerations that it is reasonable to envisage that the sign at issue will indeed be recognised by a not insignificant part of the relevant public as directly and exclusively describing a well-known variety of savoury rice which is grown more particularly in India.
71 In those circumstances, the first plea in law must be upheld and, accordingly, the contested decision annulled in part in accordance with the form of order sought by the applicant, without it being necessary to examine the other pleas raised in the context of the present action.
72 As is clear from Article 7(1) of Regulation 2017/1001, it is sufficient that one of the absolute grounds for refusal listed applies for the sign to be ineligible for registration as an EU trade mark (see order of 30 November 2015, August Brötje v OHIM (HydroComfort), T‑845/14, not published, EU:T:2015:934, paragraph 33 and the case-law cited).
The application to annul the contested decision
73 In its second head of claim, the applicant claims that the General Court should declare the mark at issue invalid. The applicant therefore requests, in essence, an order requiring EUIPO to declare the mark at issue invalid.
74 It should be recalled in that regard that, in accordance with Article 72(6) of Regulation No 2017/1001, EUIPO is required to take the necessary measures to comply with the judgment of the Courts of the European Union. It is therefore not for the General Court to issue orders to EUIPO (judgment of 3 July 2003, Alejandro v OHIM — Anheuser-Busch (BUDMEN), T‑129/01, EU:T:2003:184, paragraph 22). It is for EUIPO to draw the appropriate conclusions from the operative part of judgments of the Court and the grounds on which they are based.
75 The applicant’s second head of claim, seeking an order requiring EUIPO to annul the registration of the mark at issue, must therefore be dismissed as inadmissible.
Costs
76 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.
77 Moreover, under Article 190(2) of the Rules of Procedure, only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. On the other hand, costs incurred for the purposes of the proceedings before the Cancellation Division do not constitute recoverable costs; therefore, to that extent, the applicant’s claim cannot succeed.
78 Since EUIPO has been unsuccessful, it must be ordered to pay the costs, including those incurred in the proceedings before the Board of Appeal, in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Annuls point 3 of the operative part of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 March 2018 (Case R 90/2017-2), in relation to invalidity proceedings between Agricultural and Processed Food Products Export Development Authority (APEDA) and Burraq Travel & Tours General Tourism Office SA, in so far as it upholds the dismissal of the application for a declaration of invalidity of EU figurative mark SIR BASMATI RICE in respect of the goods in Classes 30, 31 and 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, other than for ‘sago’ and ‘artificial rice [uncooked]’ in Class 30;
2. Dismisses the action as to the remainder;
3. Orders EUIPO to pay the costs, including those incurred in the proceedings before the Board of Appeal.
Delivered in open court in Luxembourg on 5 November 2019.
Registrar | | Acting as President |