Aldi Einkauf v EUIPO - Fratelli Polli (ANTICO CASALE) (Intellectual, industrial and commercial property : Judgment) [2017] EUECJ T-327/16 (27 June 2017)

Judgment Background to the dispute On 29 December 2011, the intervener, Fratelli Polli, SpA, lodged an application for registration of an EU trade mark with the European Union Intellectual Property Office (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). The mark for which registration was sought is the word sign ANTICO CASALE. The goods and services for which registration was sought are in Classes 29, 30 and 35 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, for each of those classes, to the following description: – Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats’; – Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour and preparations made from cereals, bread, pastry and confectionery, ice-cream; honey, treacles; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice’; – Class 35: ‘Wholesaling and retailing for others, including by means of the internet and by mail order in relation to meat, fish, poultry and game food, meat extracts, fruit and preserved vegetables, frozen, dried and cooked vegetables, jellies, jams, fruit sauces, eggs, milks and dairy products, edible oils and fats, coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes, flour and preparations made from cereals, bread loaves, pastries and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice, grains, of agricultural products, horticultural and forestry products and grains included in class 31, fresh fruits and vegetables; marketing’. On 7 June 2014, the mark applied for was registered as an EU trade mark under number 10531432 in respect of the goods and services referred to in paragraph 3 above. On 24 September 2014, the applicant, Aldi Einkauf GmbH & Co. OHG, filed an application for a declaration that the mark at issue was invalid under Article 52(1)(a) of Regulation No 207/2009, in conjunction with Article 7(1)(b), (c) and (g) of that regulation. On 26 June 2015, the Cancellation Division rejected the application for a declaration of invalidity in its entirety. On 8 July 2015, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division. By decision of 13 April 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal on the ground, in essence, that the mark at issue was registered in conformity with Article 7(1)(b), (c), and (g) of Regulation No 207/2009 and that the Cancellation Division was correct to reject the application for a declaration of invalidity submitted by the applicant. Thus, according to the Board of Appeal: – the mark at issue will be perceived by the relevant Italian‑speaking public neither as a geographical name designating the origin of the goods and services, nor as describing one of their characteristics with sufficient directness for it to be considered descriptive of those goods and services for the purpose of Article 7(1)(c) of Regulation No 207/2009; – in so far as the applicant bases its claim that the mark at issue lacks distinctive character on the descriptive nature of the mark, such an argument cannot succeed and the use of the term ‘casale’ in other marks is not capable of demonstrating its lack of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009; – the mark at issue is not liable to deceive the public within the meaning of Article 7(1)(g) of Regulation No 207/2009 since it does not include a clear indication regarding the characteristics of the goods and services that unequivocally contradicts the actual content of the list of protected goods. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order EUIPO to pay the costs. EUIPO and the intervener contend that the Court should: – dismiss the action; – order the applicant to pay the costs; Law In support of its action, the applicant submits three pleas in law alleging, respectively, infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) thereof; infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) thereof; and infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(g) thereof. The Board of Appeal dismissed the appeal brought before it on the basis of, first, the ground for refusal laid down in Article 7(1)(c) of Regulation No 207/2009, secondly, on the ground for refusal laid down in Article 7(1)(b) of the regulation and, thirdly, on the ground for refusal laid down in Article 7(1)(g) of the regulation. In those circumstances, the Court considers it appropriate to examine the pleas in the same order as that followed by the Board of Appeal. The second plea, alleging infringement of Article 52(1)(a) of Regulation No 207/2009, in conjunction with Article 7(1)(c) thereof The applicant submits, in essence, that the Board of Appeal erred in concluding in the contested decision that the mark at issue is not descriptive. EUIPO, supported by the intervener, disputes that assertion. Under Article 52(1)(a) of Regulation No 207/2009, an EU trade mark is to be declared invalid, inter alia on application to EUIPO, where it has been registered contrary to the provisions of Article 7 of that regulation. Article 7(1)(c) of Regulation No 207/2009 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’ are not to be registered. Article 7(1)(c) of Regulation No 207/2009 pursues an aim that is in the public interest, which requires that signs or indications that may serve, in trade, to designate characteristics of the goods or services for 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 21 January 2015, Grundig Multimedia v EUIPO (GentleCare) , T‑188/14, not published, EU:T:2015:34 , paragraph 18 and the case-law cited). It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, there must be a sufficiently direct and specific relationship between the sign and the goods or services at issue to enable the public concerned immediately to perceive, without further thought, a description of the goods or services or one of their characteristics (see judgment of 21 January 2015, GentleCare , T‑188/14, not published, EU:T:2015:34 , paragraph 19 and the case-law cited). Accordingly, the descriptive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration is sought and, second, by reference to the perception of the relevant public (judgment of 30 September 2015, Ecolab USA v OHIM (GREASECUTTER) , T‑610/13, not published, EU:T:2015:737 , paragraph 19). It is in the light of those considerations that the applicant’s arguments must be assessed. As a preliminary point, as regards the relevant public, it should be noted that the goods at issue in Classes 29 and 30 (see paragraph 3 above) are purchased every day by all kinds of consumers with an average level of attention. Concerning the services in Class 35, they are intended both for the general public and business consumers, whose level of attention may be higher than average, as the Board of Appeal stated in paragraph 19 of the contested decision. Furthermore, since the mark at issue consists of the Italian words ‘antico’ and ‘casale’, the Board of Appeal was fully entitled to find in paragraph 20 of the contested decision that the assessment of its descriptive character had to be carried out with the Italian-speaking public in mind, which, moreover, is not disputed by the applicant. Thus, the mark at issue consists of the words ‘antico’ and ‘casale’. The meaning of the Italian word ‘antico’, namely ‘old’ or ‘bygone’, has not been disputed. As regards the word ‘casale’, the applicant interprets it essentially as meaning ‘farmhouse’, whereas the intervener interprets it as meaning ‘hamlet’. The Board of Appeal stated, in paragraph 23 of the contested decision, on the basis of an extract from the Italian dictionary Treccani , that ‘casale’ means: ‘group of a few houses in the countryside, located in specific areas and for specific needs’. According to the dictionary, this word is commonly used as a component of a toponym. It also means a ‘rustic building, isolated in the countryside’. The Board of Appeal noted that the word ‘casale’, in its meaning of ‘hamlet’, is typically followed by an additional name. However, even though the mark at issue is not followed by a name stating a geographical location, the Board of Appeal did not rule out the possibility that part of the relevant public might perceive ‘casale’ as meaning ‘hamlet’. The Board of Appeal took the view, in paragraph 30 of the contested decision, that it was not possible to base the alleged descriptive character of the mark at issue on the fact that it would be perceived as a geographical name. Likewise, the Board of Appeal stated, in paragraphs 36 and 37 of the contested decision, that the mark at issue might invite consumers to make some associations but, as such, there is no sufficiently direct and specific connection between the mark and the goods and services at issue. The applicant maintains that the mark at issue consists of an indication that may serve in trade to designate the (geographical) origin or special characteristics of the goods and services bearing it. In the applicant’s view, the location to which the expression ‘antico casale’ might refer to is irrelevant, as it does not concern a specific place name. A considerable part of the relevant public would understand the sign ANTICO CASALE as ‘old farmhouse’ or ‘old hamlet’. The applicant does not deny that there are many ‘old farmhouses’ and ‘old hamlets’. In its view, it is nonetheless indisputable that foodstuffs are frequently sold directly in old hamlets or farms. Accordingly, the expression ‘antico casale’ refers to a place of origin or a retail outlet. The applicant concludes from this that the sign ANTICO CASALE, in respect of the goods or services at issue, tells the relevant public about one of the material characteristics of those goods and services, namely where they are available and, where relevant, tells them that its produce is cultivated and its animals looked after as they were historically. As observed by the Board of Appeal, the mark at issue cannot be perceived as a geographical name known to the relevant class of persons as the designation of a place. Likewise, the mark at issue cannot be regarded as indicating origin more generally because the meaning is too vague. As correctly noted by the Board of Appeal in paragraphs 35 and 36 of the contested decision, consumers do not imagine a specific origin when they encounter the expression ‘old farmhouse’; which does not directly describe a specific characteristic or the quality of the goods or services at issue but at best alludes to certain characteristics of the goods, which will vary depending on different consumers’ personalities. Accordingly, there is no sufficiently direct and specific connection between the meaning of a mark and the goods and services covered for it to be possible to find that it is a clear and unequivocal description of them, or of one of their characteristics or their quality. Moreover, it is unlikely that the relevant public will imagine immediately that the goods or services are goods originating from an old farmhouse or that the goods sold under the mark at issue were cultivated as they were historically because extra effort is required to perceive the goods as such. It is clear from settled case-law that Article 7(1)(c) of Regulation No 207/2009 does not apply to those terms that are only suggestive or allusive as regards certain characteristics of goods (judgment of 31 January 2001, Taurus-Fil v OHIM (Cine Action) , T‑135/99, EU:T:2001:30 , paragraph 29). Furthermore, the Board of Appeal was also correct to state, in paragraph 38 of the contested decision, that the list of registered goods includes a large number of goods which are not typical farmhouse goods, such as ‘meat extracts’, ‘ice-cream’, ‘baking-powder’, ‘salt’ or ‘ice’. In view of the above, the Board of Appeal did not err in finding, in paragraph 41 of the contested decision, that the word mark ANTICO CASALE was not descriptive and that there was therefore no need to cancel the mark on the basis of Article 51(1) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) thereof. In those circumstances, the present plea must be rejected. The first plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009 According to the applicant, the sign ANTICO CASALE lacks distinctive character in respect of the designated goods and services because of its meaning. According to settled case-law, the marks referred to in Article 7(1)(b) of Regulation No 207/2009 are those which 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 at issue, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgments of 3 July 2003, Best Buy Concepts v OHIM (BEST BUY) , T‑122/01, EU:T:2003:183, paragraph 20; of 21 January 2011, BSH v OHIM (executive edition) , T‑310/08, not published, EU:T:2011:16, paragraph 23, and of 23 January 2014, Novartis v OHIM (CARE TO CARE) , T‑68/13, not published, EU:T:2014:29, paragraph 12). Distinctive character must be assessed, first, by reference to the goods or services in respect of which registration is sought and, second, by reference to the perception of the relevant public (see judgment of 21 January 2010, Audi v OHIM , C‑398/08 P, EU:C:2010:29 , paragraph 34 and the case-law cited). It is clear from the case-law that a minimum degree of distinctive character is sufficient to render inapplicable the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL) , T‑34/00, EU:T:2002:41, paragraph 39, and of 23 January 2014, CARE TO CARE , T‑68/13, not published, EU:T:2014:29, paragraph 12). The applicant submits that there is no evidence to suggest that the public might regard the word mark ANTICO CASALE, meaning ‘old hamlet’ or ‘old farmhouse’, as an indication of the origin of the goods and services (broadly, foodstuffs) in question. In the present case, it is clear that the applicant claimed before the Board of Appeal that, since the mark at issue was descriptive of the goods and services in question, it was also non-distinctive. In paragraph 54 of the contested decision, the Board of Appeal held that this argument had to be disregarded, given that the mark at issue had not been found to be directly descriptive. In paragraph 55 of the contested decision, the Board of Appeal rejected the applicant’s argument that goods sold in an old farmhouse, or services provided from an old farmhouse, had a ‘considerable reputation’ compared to industrial goods, bearing in mind the superior quality of the goods. In that regard, the Board of Appeal stated that, while it was possible to agree that that origin could denote the quality of the goods and services, the applicant had not submitted any evidence to show that the public would immediately establish such a link between a ‘considerable reputation’ and the specific goods and services at issue and that that claim cannot be considered correct without further explanation or evidence. It is sufficient to note in that regard that, under Article 76(1) of Regulation No 207/2009, when considering absolute grounds for refusal, EUIPO examiners and, on appeal, the Boards of Appeal of EUIPO are required to examine the facts of their own motion in order to determine whether the mark for which registration is sought comes within one of the grounds for refusal of registration laid down in Article 7 of that regulation. It follows that the competent bodies of EUIPO may be required to base their decisions on facts which have not been put forward by the applicant. EUIPO must examine of its own motion the relevant facts which may lead it to apply an absolute ground for refusal. In invalidity proceedings, however, EUIPO cannot be required to carry out afresh, of its own motion, the examination which the examiner conducted of the relevant facts, which may lead it to apply the absolute grounds for refusal. It follows from the provisions of Articles 52 and 55 of Regulation No 207/2009 that an EU trade mark is regarded as valid until it has been declared invalid by EUIPO following invalidity proceedings. It therefore enjoys a presumption of validity, which is the logical consequence of the check carried out by EUIPO in the examination of an application for registration. By virtue of that presumption of validity, EUIPO’s obligation, under Article 76(1) of Regulation No 207/2009, to examine of its own motion the relevant facts, which may lead it to apply absolute grounds for refusal, is restricted to the examination of the application for an EU trade mark carried out by its examiners and, on appeal, by the Boards of Appeal during the procedure for registration of that mark. In invalidity proceedings, as the registered EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to place before EUIPO the specific facts which call the validity of that trade mark into question (judgment of 13 September 2013, Fürstlich Castell’sches Domänenambt v OHIM — Castel Frères (CASTEL) , T‑320/10, EU:T:2013:424, paragraphs 26 to 28). In the present case, however, it is clear that the applicant has furnished no such specific evidence. As part of the present plea, the applicant also claims that consumers will not think that the foodstuffs retailed under the mark ANTICO CASALE come from a specific commercial origin or producer, but will assume instead that the goods and services at issue are on sale in traditional village communities in usual village locations through direct sales or are intended for direct consumption. Moreover, that expression, as a laudatory statement about the goods, is intended to convey a certain refinement or exclusivity with regard to their consumption. Finally, according to the applicant, the expression ‘antico casale’ translated as ‘old farmhouse’ or ‘old hamlet’ merely describes a regular retail outlet. It suffices to note that, even though direct sales of foodstuffs may take place in rural houses, the fact nevertheless remains that the sale of goods normally takes place at grocery shops, supermarkets and other similar locations, and that the goods are normally not consumed in the same place. Accordingly, the assertion that the public seeing the sign ANTICO CASALE affixed to foodstuffs will immediately think that they are goods offered for sale at farmer’s markets cannot succeed. As for the assertion that expression ‘antico casale’ will be perceived as a laudatory statement, given that it conveys a certain refinement or exclusivity, it is sufficient to note that the fact that a mark may have a laudatory connotation does not necessarily deprive it of a distinctive character (judgment of 12 July 2012, Smart Technologies ULC v OHIM , C‑311/11 P, EU:C:2012:460 , paragraph 33). In those circumstances, the present plea must be rejected. The third plea, alleging infringement of Article 52(1)(a) of Regulation No 207/2009, in conjunction with Article 7(1)(g) thereof With reference to the third plea, the applicant argues that the mark at issue was registered in breach of Article 7(1)(g) of Regulation No 207/2009 because it deceives the public as to the nature, quality or geographical origin of the goods and services which it covers. The word mark ANTICO CASALE makes it clear to the target public that the goods so marked are sold in an ‘old farmhouse’ or that such an ‘old farmhouse’ is the place of distribution. In addition, the mark at issue gives consumers the impression that the goods are produced and sold using ‘historical cultivation methods’ or ‘historical traditions of animal husbandry’. According to the applicant, nowadays these methods are no longer used. EUIPO and the intervener dispute those arguments. Under Article 7(1)(g) of Regulation No 207/2009, read in conjunction with Article 52(1)(a) thereof, trade marks ‘which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods’ in question are not to be registered or are to be declared invalid. In that regard, the Board of Appeal found, in paragraphs 61 to 63 of the contested decision, that the mark at issue was not liable to deceive the public, given that the public or the Italian consumer will not perceive ‘antico casale’ as an indication of the geographical origin of the goods and services at issue or will perceive it merely as a laudatory statement. That assessment is not vitiated by error. As EUIPO observes, it is settled case-law that, when a mark does not convey a sufficiently specific and clear message concerning the protected goods and services or their characteristics but, at the very most, hints at them, there can be no deception in relation to those goods and services (judgment of 24 September 2008, Hup Uslugi Polska v OHIM — Manpower (I. T.@MANPOWER) , T‑248/05, not published, EU:T:2008:396, paragraphs 67 and 68). In the light of the foregoing, the third plea must be rejected and, in consequence, the action dismissed in its entirety. Costs 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. Since the applicant has been unsuccessful, it 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 Aldi Einkauf GmbH & Co. OHG to pay the costs. Prek Schalin Costeira Delivered in open court in Luxembourg on 27 June 2017. E. Coulon M. Prek Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice . This electronic version is not authentic and is subject to amendment. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII