Orders nº T-663/18 of Tribunal General de la Unión Europea, September 26, 2019

Resolution DateSeptember 26, 2019
Issuing OrganizationTribunal General de la Unión Europea
Decision NumberT-663/18

(EU trade mark - Invalidity proceedings - EU figurative mark Soba JAPANESE FRIED NOODLES - Absolute ground for invalidity - Article 59(1)(a) of Regulation (EU) 2017/1001 - No distinctive character - Article 7(1)(b) of Regulation 2017/1001 - Action manifestly lacking any foundation in law)

In Case T-663/18,

Nissin Foods Holdings Co. Ltd, established in Osaka (Japan), represented by S. Malynicz QC, G. Messenger, Barrister, K. Gilbert and G. Lodge, Solicitors,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by G. Sakalaitė-Orlovskienė and J. Crespo Carrillo, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

The GB Foods, SA, established in L’Hospitalet de Llobregat (Spain), represented by E. Torner Lasalle, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 29 August 2018 (Case R 111/2018-4), relating to invalidity proceedings between The GB Foods and Nissin Foods Holdings,

THE GENERAL COURT (Seventh Chamber),

composed of V. Tomljenović (Rapporteur), President, A. Marcoulli and A. Kornezov, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 9 November 2018,

having regard to the response of EUIPO lodged at the Court Registry on 25 January 2019,

having regard to the response of the intervener lodged at the Court Registry on 23 January 2019,

makes the following

Order

Background to the dispute

1 On 28 February 2011, the applicant, Nissin Foods Holdings Co. Ltd, obtained, from the European Union Intellectual Property Office (EUIPO), registration, under number 9377904, of the EU figurative mark reproduced below, pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trademark (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)):

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2 The goods in respect of which the mark was registered are in Class 30 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: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice; aromatic preparations for food; condiments; seasonings; essences for foodstuffs [except etheric essences and essential oils]; farinaceous foods; noodles; pasta; instant noodles; deep frozen noodles; chilled noodles; dried noodles; and prepared meals containing [principally] noodles’.

3 On 8 September 2015, the intervener, The GB Foods, SA, filed an application for a declaration of invalidity of the contested mark in respect of the goods referred to in paragraph 2 above, on the basis of Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001), in conjunction with Article 7(1)(b), (d) and (g) of Regulation No 207/2009 (now Article 7(1)(b), (d) and (g) of Regulation 2017/1001).

4 By decision of 30 November 2017, the Cancellation Division partially upheld the application for a declaration of invalidity, namely in respect of ‘noodles; pasta; instant noodles; deep frozen noodles; chilled noodles; dried noodles; and prepared meals containing [principally] noodles’ (‘the goods at issue’), on the ground that the contested mark is devoid of any distinctive character in respect of those goods, within the meaning of Article 7(1)(b) of Regulation 2017/1001.

5 The applicant filed a notice of appeal with EUIPO, under Articles 66 to 71 of Regulation 2017/1001, against the Cancellation Division’s decision in so far as it upheld the application for a declaration of invalidity.

6 By decision of 29 August 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, the Board of Appeal held, first, that the word elements ‘soba Japanese fried noodles’ of the contested mark would be perceived by the relevant public, namely the English-speaking general public, as descriptive of the goods at issue. Consequently, those word elements are devoid of any distinctive character. Secondly, the Board of Appeal found that the figurative elements of the contested mark, namely the colours, font and black rectangular shape, were commonplace and not distinctive. Similarly, the Asian characters are not sufficient to create the required minimum level of distinctiveness of the contested mark. The Board of Appeal therefore concluded that the contested mark did not contain any element that consumers would remember as an indication of the commercial origin of the goods at issue and that, consequently, the mark lacked distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.

Forms of order sought

7 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO and the intervener to pay the costs.

8 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

9 The intervener contends that the Court should:

- dismiss the action and uphold the contested decision and the invalidity of the contested mark;

- order the applicant to bear its own costs in accordance with Article 134 of the Rules of Procedure of the General Court.

Law

10 Under Article 126 of the Rules of Procedure, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.

11 In the present case, the Court, taking the view that it has sufficient information from the documents before it, has decided, pursuant to Article 126 of the Rules of Procedure, to give a decision without taking further steps in the proceedings, even though one of the parties, in this case the applicant, has requested a hearing (see, to that effect, judgment of 6 June 2018, Apcoa Parking Holdings v EUIPO, C-32/17 P, not published, EU:C:2018:396, paragraph 22, and order of 17 June 2016, Hako v EUIPO (SCRUBMASTER), T-629/15, not published, EU:T:2016:384, paragraph 10 and the case-law cited).

The intervener’s first head of claim

12 By its first head of claim, the intervener asks the Court to dismiss the action and uphold the contested decision and the invalidity of the contested mark.

13 Given that ‘upholding’ the contested decision is tantamount to dismissing the action and that, since, by dismissing the action, the present judgment would be upholding the contested decision, which upheld the Cancellation Division’s decision declaring the partial invalidity of the contested mark, the intervener’s first head of claim must be regarded as seeking, in essence, the dismissal of the action (see, to that effect, judgment of 13 July 2018, Star Television Productions v EUIPO - Marc Dorcel (STAR), T-797/17, not published, EU:T:2018:469, paragraph 75 and the case-law cited).

Substance

14 In support of its action, the applicant raises, in essence, a single plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001 in that the Board of Appeal erred in finding that the contested mark lacks distinctive character.

15 EUIPO and the intervener dispute the applicant’s arguments.

16 It should be recalled that, under Article 59(l)(a) of Regulation 2017/1001, an EU trade mark is to be declared invalid, on application to EUIPO, where the mark has been registered contrary to the provisions of Article 7 of that regulation.

17 Under Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of distinctive character are not to be registered. Article 7(2) of that regulation states that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

18 According to settled case-law, a mark is distinctive, within the meaning of Article 7(1)(b) of Regulation 2017/1001, where it serves to identify the product or service in respect of which registration was applied for as originating from a particular undertaking, and thus to distinguish that product or service from those of other undertakings (see judgment of 12 July 2012, Smart Technologies v OHIM, C-311/11 P, EU:C:2012:460, paragraph 23 and the case-law cited).

19 The distinctiveness of a mark must be assessed, first, by reference to the goods or services in respect of which registration of the mark is sought and, second, by reference to the perception of the relevant public, which consists of the average consumer of those goods or services (see judgment of 12 July 2012, Smart Technologies v OHIM, C-311/11 P, EU:C:2012:460, paragraph 24 and the case-law cited).

20 Any distinctive character of a compound mark may be assessed, in part, in respect of each of the terms or elements, taken separately, but that assessment...

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