“Devin” JSCo risks cancellation of its registered EUTM “DEVIN” after the Board of Appeal of the European Union Intellectual Property Office (EUIPO) confirmed the decision of the Cancellation Division, by which the trademark was declared invalid in its entirety.
The EU word trademark “DEVIN” was registered in 2011 in Class 32: “Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages”.
The cancellation procedure has been initialized by the Haskovo Chamber of Commerce and Industry on the grounds of Article 52(1)(a), in conjunction with Article 7(1)(c), (f) and (g) of the Council Regulation (EC) No 207/2009 on the Community trademark.
Pursuant to Article 52(1)(a) EUTMR, a trademark shall be declared invalid on application to the Office where it has been registered contrary to the provisions of Article 7 EUTMR. In that regard, Article 7 EUTMR, which sets out the absolute grounds for refusal of registration of signs as European trademarks, states, in relevant part, that ‘trademarks 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’ may not be registered.
The cancellation applicant’s claim was that the mark was the name of a mineral water deposit recognized in Bulgaria, a registered geographical indication, protected under the Lisbon agreement in 27 countries.
The Cancellation Division invalidated the registered EUTM, declaring it registered contrary to the provisions of Article 7 EUTMR for, on the one hand, its lack of distinctiveness, and, on the other hand, being contrary to public policy or to accepted principles of morality, for being of such nature as to deceive the public concerning the nature, quality and geographical origin of the goods. More specifically, the Division decided, that the public could be deceived into believing that spring water or table water, designated with the contested mark, is mineral water with the specific properties associated with the geographical location.
The EUTM proprietor “Devin” JSCo brought the decision of the Cancellation Division to appeal, with the following arguments:
- The trademark Devin has acquired distinctiveness in Bulgaria. For that reason the decision is based solely on the claim, that the trademark may be descriptive to the public in Romania and Greece;
- The Cancellation Division has falsely concluded, that the name “Devin” is known amongst substantial part of the public in these two countries, the town of Devin being small and generally unknown beyond the boundaries of Bulgaria;
- There is a certain ‘exclusivity’ of the exploitation of the Devin mineral water source by “Devin” JSCo. Under the European Directive EC/54/2009 the exploitation and the commercialization of the waters of one mineral water source can be made under one trade name.
- Linking a tourist destination with the goods in Class 32 is a misconception. The registration of the trademark does not impede the town of Devin’s development as a touristic destination.
- The Office has already registered the marks ‘VITTEL’ and ‘EVIAN’ for sparkling waters in Class 32. Moreover, the commercialization of different products from one source under a single commercial name is in favor of the consumer.
The Board of Appeal confirms the decision of the Cancellation Division, pointing on the following criteria for registrability:
- Firstly, Article 7(1)(c) EUTMR pursues an aim in the public interest, requiring that the signs or indications descriptive of the characteristics of the goods or services in respect of which registration is sought may be freely used by all. Nevertheless, a sign may be refused registration on the basis of Article 7(1)(c) EUTMR only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of the goods’ characteristics.
- Furthermore, for signs or indications that may serve to designate the geographical origin or destination of the categories of goods, it is in the public interest that geographical names remain available, not least because they may be an indication of the quality and other characteristics of the categories of goods or services concerned, and may also, in various ways, influence consumer preferences by, for instance, associating the goods or services with a place that may evoke positive feelings.
- Registration of geographical names as trademarks is not permitted if they designate specific geographical locations that are already famous, or are known for the category of goods or services concerned, and are therefore associated with those goods or services in the mind of the relevant class of person. Article 7(1)(c) EUTMR does not preclude the registration of geographical names that are unknown to the relevant class of persons or, at least, unknown as the designation of a geographical place.
In this case, the Board has established that since the goods concerned are daily consumer goods, the relevant public is an average EU consumer, who is reasonably well informed and reasonably observant and circumspect.
Furthermore, the BoA has stated that Devin is a geographical location, famous for its mineral waters, and is included in the official list of natural mineral waters recognised by Bulgaria and other Member States, published in the Official Journal of the European Union under Article 1 of the Directive 2009/54/EC, as well as ‘Devin Mineral Water’ has been recognised since 1995, under the Lisbon Agreement (No 883/2006), as a GI (190-01/1995) for mineral waters in Bulgaria and other Members States including Greece and Romania.
The Board acknowledges that the trademark ‘Devin’ has been officially declared a ‘well-known trademark’ in Bulgaria for mineral water, however it reminds that
‘Devin’ has been registered as a European Union trademark with respect to mineral waters and related goods. Therefore, an analysis must also be made of the perception of the general public in territories outside of Bulgaria, which in fact, is the central point of dispute between the parties.
Concerning the argument that Devin is a well known SPA resort, renown for its mineral waters, the Board of Appeal has decided, that the Proprietor failed in its attempt to prove the negative fact of Devin being unknown amongst foreign tourists. More specifically, the Board considers the survey, conducted by Devin JSCo in several Member States, including Greece, on the popularity of Devin as a geographical location, as “flawed”, and the resulting data as “not convincing”. The BoA has found that there is clear evidence that the town of Devin is not only famous for its waters in Bulgaria, where the EUTM proprietor possesses a registered mark with repute, but also beyond its borders, particularly in the
adjacent Member States of Greece and Romania, and therefore, the considerable fame that Devin enjoys in Bulgaria for its waters “should mysteriously vanish on crossing the Bulgarian-Greek border.”
The BoA has also rejected another key argument put forward by the EUTM proprietor – the so-called ‘exclusivity’ of its contract to exploit Devin waters. While the EUTM proprietor has claimed a factual monopoly over the GI ‘Devin Natural Mineral Water’, the Board presumes that any monopoly that the former may have is limited in time and may, in any event, be terminated for a variety of commercial or legal reasons. Moreover, the ‘exploitation’ of a natural spring and its subsequent bottling may involve different undertakings. The Board has further noted that the relevant European Directive EC/54/2009, referred to by Devin JSCo in its defense, does not restrict the exploitation of mineral water sources to one undertaking, as the trademark holder claims, but only imposes the restriction that water from one spring should be marketed always under one and the same ‘trade description’
As for the argument that the Office has registered the marks ‘VITTEL’ and ‘EVIAN’ for inter alia ‘mineral waters’ in Class 32 the Board points out that in these cases an objection under Article 7 EUTMR has been raised and later waived after the submission of evidence. Therefore, it does not follow that the Office has a ‘practice’ of accepting such marks, merely on the basis of one such unchallenged registration.
Finally, the Board has noted that the EUTM proprietor sought protection of the mark ‘DEVIN’ in a number of designated territories by means of an international registration IR 870 803 with respect to ‘mineral water [beverages] from the region of Devin’, but the mark was ultimately refused protection in all designated territories, which included the Benelux, Austria and Germany. Although the IR was refused in 2006, before the Bulgarian office found the mark ‘DEVIN’ to be ‘well known’ in Bulgaria, the Board doubts whether this fact, would have been sufficient to change the outcome.
For all the aforesaid reasons, the Board has dismissed the appeal and confirmed the finding of the contested decision that for a significant part of the relevant public outside of Bulgaria, the town of ‘Devin’ possesses a link with the goods covered by the challenged mark, all of which comprise mineral, or spring water or drinks which may include, as an important or even essential ingredient, mineral water, and is capable, in the eyes of that public, of designating the geographical origin of those goods.
The decision of the Board of Appeal is not final and can itself be appealed to the Court of Justice of the European Union.
“Devin” JSCo has two more EU trademarks – both figurative.
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