Judgments nº T-361/18 of Tribunal General de la Unión Europea, November 05, 2019

• Resolution Date: November 05, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-361/18

(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...