Unite the Union v EUIPO - WWRD Ireland (WATERFORD) (EU trade mark - EU word mark WATERFORD - Judgment) [2022] EUECJ T-739/20 (22 June 2022)

Judgment By its action under Article 263 TFEU, the applicant, Unite the Union, seeks the annulment and alteration of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 September 2020 (Case R 2683/2019-2) (‘the contested decision’). Background to the dispute On 23 June 2000, the predecessor in law to the intervener, WWRD Ireland IPCO LLC, obtained from EUIPO the registration, under the number 397521, of the EU word mark WATERFORD pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself 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)). The goods in respect of which the contested mark was registered are in Classes 3, 8, 11, 21, 24 and 34 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 3: ‘Perfumery products; essential oils, cosmetics, lotions for the care of the body and face, soaps, hair care products, deodorants and air fresheners, potpourri; scented aromatherapy oils and fragrance sachets’; – Class 8: ‘Cutlery included in Class 8’; – Class 11: ‘Lightingware, chandeliers, lamps, wall-brackets, parts and fittings’; – Class 21: ‘Articles of glassware, earthenware, chinaware and porcelain’; – Class 24: ‘Textile piece-goods not included in other classes, linen and goods made of linen included in Class 24’; – Class 34: ‘Ash-trays, tobacco jars, cigarette lighters, cigarette holders and smokers articles included in Class 34’. On 24 January 2013, the applicant filed an application for revocation of the contested mark in respect of the ‘articles of glassware, earthenware, chinaware and porcelain’ in Class 21, pursuant to Article 51(1)(c) of Regulation No 207/2009 (now Article 58(1)(c) of Regulation 2017/1001), on the ground that, in consequence of its use, that mark was liable to mislead the public as to the geographical origin of those goods. By decision of 25 November 2014, the Cancellation Division rejected the application for revocation (Case 7522 C). It found that the applicant had not provided evidence of misleading use of the contested mark or evidence that the relevant public would perceive the contested mark as an indication of the geographical origin of the goods concerned for the purposes of Article 51(1)(c) of Regulation No 207/2009. The applicant did not file a notice of appeal against the Cancellation Division’s decision, which therefore became final. On 31 May 2017, the applicant filed a new application for revocation of the contested mark, pursuant to Article 51(1)(c) of Regulation No 207/2009, in respect of the ‘articles of glassware, earthenware, chinaware and porcelain’ in Class 21. In support of its application, the applicant provided an opinion poll entitled ‘Waterford Study’, which was dated 20 March 2015 (‘the Waterford Study’). On 7 June 2017, EUIPO sent a communication to the parties, stating that the application for revocation which had been filed on 31 May 2017 was inadmissible on the ground that an application relating to the same subject matter and cause of action, involving the same parties (Case 7522 C), had already been adjudicated on by the Cancellation Division and had acquired the authority of a final decision. The parties were invited to submit their observations. On 8 August 2017, EUIPO sent a further communication stating that, having received the applicant’s observations on 12 July 2017, it was maintaining its findings as to the inadmissibility of the application for revocation which had been filed on 31 May 2017 and that a decision against which an appeal could be brought would soon be adopted. On 14 May 2018, EUIPO sent the parties a communication annulling its two previous communications of 7 June and 8 August 2017 and stating that it considered the application for revocation which had been filed on 31 May 2017 to be admissible. By decision of 18 October 2019, the Cancellation Division rejected the application for revocation (Case 15033 C). It found that the principle of res judicata did not apply and it confined its examination to the facts and evidence which came into existence or were dated after the decision of 25 November 2014. It took the view that the Waterford Study did not prove that the contested mark had been, or could have been, liable to mislead the public since the adoption of the decision of 25 November 2014. In conclusion, the Cancellation Division found that the use of the contested mark was not misleading and that there was no false indication as to the nature, quality and geographical origin. On 26 November 2019, the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision. By the contested decision, the Board of Appeal dismissed the appeal. First, the Board of Appeal stated that it had some doubts regarding the admissibility of the appeal. Secondly, it carried out an examination as to the merits of the application of Article 58(1)(c) of Regulation 2017/1001, read in conjunction with Article 7(1)(g) of that regulation, taking into account the new evidence which had been provided by the applicant, namely the Waterford Study. The Board of Appeal found that the Cancellation Division had not erred in concluding that it had not been proved that the contested mark was, in consequence of the use which had been made of it by the intervener in respect of the goods for which it was registered, liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods. Forms of order sought The applicant claims that the Court should: – reject the plea of inadmissibility; – annul the contested decision; – alter the contested decision in such a way as to find that the contested mark should be revoked; – order EUIPO to pay the costs. EUIPO contends that the Court should: – dismiss the action as inadmissible; – in the alternative, dismiss the action as unfounded; – order the applicant to pay the costs. The intervener contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law Admissibility In its plea of inadmissibility, EUIPO claims that, under Article 63(3) of Regulation 2017/1001, decisions which it takes in invalidity and revocation proceedings constitute a bar to further applications for a declaration of invalidity and for revocation where the conditions are fulfilled. EUIPO submits that, since the conditions laid down by that provision are met in the present case, the present action must be dismissed as inadmissible. Article 63(3) of Regulation 2017/1001 provides that ‘an application for revocation or for a declaration of invalidity shall be inadmissible where an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on its merits, either by [EUIPO] or by an EU trade mark court as referred to in Article 123, and the decision of [EUIPO] or that court on that application has acquired the authority of a final decision’. That provision concerns the admissibility of an application for revocation or for a declaration of invalidity which has been submitted to EUIPO. However, it must be borne in mind that the conditions relating to the admissibility of an action for annulment brought before the Court are laid down by Article 263 TFEU. It must be stated that, first, EUIPO does not state which of the conditions relating to the admissibility of an action that are laid down by Article 263 TFEU is not satisfied in the present case. When it was questioned in that regard at the hearing, EUIPO was not able to clarify its argument and identify the condition relating to admissibility which it was referring to. Secondly, EUIPO does not explain the reason why compliance with the conditions in Article 63(3) of Regulation 2017/1001 in the present case could lead to the inadmissibility of the action brought before the Court seeking the annulment of the contested decision in which the Board of Appeal ruled on the application for revocation which had been filed by the applicant. In particular, EUIPO does not explain the reason why the contested decision dismissing the appeal brought by the applicant, whether because that appeal is inadmissible or because of the substance of the case, does not constitute a measure against which an action may be brought before the Court. EUIPO’s line of argument seeking to establish that the admissibility of an action for annulment against a decision of a Board of Appeal is subject to compliance with a provision of Regulation 2017/1001 would be contrary to the principles of legal certainty and of effective judicial protection since such an action would be subject to a condition of admissibility which is not expressly laid down by Article 263 TFEU. Since Article 263 TFEU governs the conditions relating to the admissibility of an action before the Court, it cannot be interpreted in the light of a provision of secondary legislation such as Article 63(3) of Regulation 2017/1001, which concerns the admissibility of an application for revocation or for a declaration of invalidity which has been submitted before EUIPO. Such an interpretation would be contrary to the principle of effective judicial protection, which is laid down by the first sentence of Article 47 of the Charter of Fundamental Rights of the European Union , which states that everyone whose rights and freedoms guaranteed by the law of the European Union are violated has the right to an effective remedy before a tribunal in compliance with the conditions laid down in that article. It follows from the case-law of the Court of Justice that, if the judicial review guaranteed by that provision is to be effective, the person concerned must, inter alia, be able to defend his or her rights under the best possible conditions and to decide, with full knowledge of the facts, whether it is worthwhile to bring an action against a given entity before the court with jurisdiction (see judgment of 29 April 2021, Banco de Portugal and Others , C‑504/19, EU:C:2021:335 , paragraph 57 and the case-law cited). Furthermore, it must be pointed out that the Court’s examination of the compliance, in a decision taken by a Board of Appeal, with the conditions laid down by a provision of Regulation 2017/1001, in particular the conditions laid down by the provision governing the admissibility of an application for revocation, is part of the substantive examination and necessarily presupposes that the action brought against that decision is admissible. The plea of inadmissibility must therefore be rejected. Substance In support of its action, the applicant puts forward, in essence, a single plea in law, alleging infringement of Article 58(1)(c) of Regulation 2017/1001. The issue of whether the evidence submitted for the first time before the Court is admissible EUIPO states that Annex A.6 to the application contains references to videos available on the website YouTube and aims to show that the contested mark is advertised in the United States and in the European Union on cable television channels. It takes the view that, since that evidence was not produced in the course of the administrative proceedings, it must be rejected as inadmissible. At the hearing, the applicant claimed that the evidence in Annex A.6 was admissible, even though it had not been produced during the administrative proceedings. It must be pointed out that the purpose of actions brought before the Court under Article 72(2) of Regulation 2017/1001 is to review the legality of decisions of the Boards of Appeal. Pursuant to Article 95 of Regulation 2017/1001, that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN) , T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM , C‑416/04 P, EU:C:2006:310 , paragraph 55, and of 13 March 2007, OHIM v Kaul , C‑29/05 P, EU:C:2007:162 , paragraph 53). Therefore, it is not the Court’s function to review the facts in the light of evidence produced for the first time before it. To allow such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ pleadings may not alter the subject matter of the proceedings before the Board of Appeal. Accordingly, the evidence submitted for the first time before the Court must be declared inadmissible and there is no need to examine it (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI) , T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited). The single plea, alleging infringement of Article 58(1)(c) of Regulation 2017/1001 It must be pointed out at the outset that the applicant, the intervener and EUIPO, in their written pleadings, and the Board of Appeal, in the contested decision, refer to the provisions of Regulation 2017/1001. However, given the date on which the application for revocation in question was filed, namely, in the present case, 31 May 2017, which is decisive for the purposes of identifying the applicable substantive law, the present case is governed by the substantive provisions of Regulation No 207/2009, as amended (see, to that effect, judgment of 3 July 2019, Viridis Pharmaceutical v EUIPO , C‑668/17 P, EU:C:2019:557 , paragraph 3). Since Article 58 of Regulation 2017/1001 corresponds to Article 51 of Regulation No 207/2009, the references made by the parties and by the Board of Appeal to the former article must be understood as referring to the latter article. It is common ground between the parties that, on 24 January 2013, the contested mark was the subject of a first application for revocation on the part of the applicant, which was based on Article 51(1)(c) of Regulation No 207/2009 and that, by a decision of 25 November 2014, the Cancellation Division rejected that application. The Cancellation Division’s decision of 25 November 2014 relating to the applicant’s first application for revocation of the contested mark was not appealed against and has become final, with the result that its content cannot be called into question. Furthermore, it must be borne in mind that, in its decision of 18 October 2019, the Cancellation Division confined its examination to the facts and evidence which came into existence or were dated after the decision of 25 November 2014. In the contested decision, the Board of Appeal upheld the Cancellation Division’s decision. The Cancellation Division and the Board of Appeal therefore confined themselves to examining the applicant’s arguments seeking to establish that the mark WATERFORD had become misleading as a result of its use as from 25 November 2014. It follows that the arguments of the applicant which had already been put forward in the context of its first application for revocation of the contested mark and which had been definitively dealt with in the Cancellation Division’s decision of 25 November 2014 were not examined by the Cancellation Division in its decision of 18 October 2019 or by the Board of Appeal in the contested decision. Consequently, the applicant’s arguments relating to facts and evidence which predate the decision of 25 November 2014 cannot be put forward again in the context of the present proceedings. However, it must be pointed out that, in the application, the applicant again puts forward arguments relating to facts which predate 25 November 2014. The applicant submits that the decision of the Supreme Court, Ireland, of 2 March 1984, which was referred to by the Board of Appeal, is irrelevant. It submits that consumers and the glass trade associate the glass and crystal sold under the contested mark with the place where it used to be manufactured, namely the city and county of Waterford. It argues that, since the outsourcing of production to eastern Europe, the use of the contested mark in relation to glass and crystal which is not manufactured in that city and county is liable to mislead the relevant public. It contends that Waterford will be understood by the relevant public as a place name that has a reputation for crystal manufacturing and as a reference to the geographical origin of the goods. In response to those arguments, the Board of Appeal referred, in paragraph 46 of the contested decision, to the decision of the Cancellation Division of 25 November 2014, which had rejected the applicant’s first application for annulment. It must be held that those arguments had already been rejected in the Cancellation Division’s decision of 25 November 2014, which had become final, and were not reassessed by the Board of Appeal. They must therefore be rejected as inadmissible. It follows that it is necessary to examine the applicant’s two complaints relating to the assessment which the Board of Appeal carried out in the contested decision. By its first complaint, the applicant submits that the Board of Appeal misapplied the standard laid down in Article 51(1)(c) of Regulation No 207/2009. It takes the view that, according to that provision, the legal standard to be applied to determine whether the rights of the proprietor of the mark should be revoked on the basis of use is to examine whether the mark is ‘liable to mislead the public’. However, it argues that the Board of Appeal erred in finding that an applicant for revocation had to show actual deceit or a sufficiently serious risk that the consumer would be deceived. It claims that the Board of Appeal applied that standard by incorrectly relying on the judgment of 30 March 2006, Emanuel (C‑259/04, EU:C:2006:215), which concerned a factual situation that was different from that in the present case and that the Court should not apply that judgment. Article 51(1)(c) of Regulation No 207/2009 provides that the rights of the proprietor of the EU trade mark are to be declared to be revoked on application to EUIPO or on the basis of a counterclaim in infringement proceedings if, in consequence of the use made of it by the proprietor or with his consent in respect of the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services. In paragraph 39 of the contested decision, the Board of Appeal stated that the circumstances for revocation referred to in Article 7(1)(g) of Regulation No 207/2009 presupposed the existence of actual deceit or a sufficiently serious risk that the consumer would be deceived (judgment of 30 March 2006, Emanuel , C‑259/04, EU:C:2006:215, paragraph 47). In paragraph 53 of the judgment of 30 March 2006, Emanuel (C‑259/04, EU:C:2006:215), the Court of Justice held that the conditions for revocation laid down by Article 12(2)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) were the same as those for the refusal of registration under Article 3(1)(g) of that directive and that those two provisions had to be interpreted in the same way. It is sufficient to state that Article 12(2)(b) of First Directive 89/104 corresponds to Article 51(1)(c) of Regulation No 207/2009 and that Article 3(1)(g) of that directive corresponds to Article 7(1)(g) of that regulation. Consequently, that assessment on the part of the Court of Justice is still relevant with regard to the interpretation of Article 51(1)(c) of Regulation No 207/2009 and Article 7(1)(g) of that regulation. The applicant’s claim that that case concerned a factual situation that is different from that in the present case is ineffective, since the Court of Justice’s interpretation was not based on the factual circumstances of that case. Furthermore, it must be pointed out that that interpretation has been confirmed by the case-law according to which the ground for revocation referred to by Article 51(1)(c) of Regulation No 207/2009 presupposes the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (see judgment of 18 May 2018, Mendes v EUIPO – Actial Farmaceutica (VSL#3) , T‑419/17, EU:T:2018:282 , paragraph 54 and the case-law cited). Whether or not Article 51(1)(c) of Regulation No 207/2009 is applicable depends on misleading use of the mark after its registration. Such misleading use must be duly proved by the applicant (see judgment of 18 May 2018, VSL#3 , T‑419/17, EU:T:2018:282 , paragraph 55 and the case-law cited). Furthermore, the applicant cannot rely on the judgment of 14 May 2009, ELIO FIORUCCI (T‑165/06, EU:T:2009:157), in order to claim that, in that case, the issue of revocation was not determined on the basis of actual deceit. It is sufficient to state that, in paragraph 37 of that judgment, which is cited by the applicant, the Court merely stated that, since no evidence of use of the mark at issue after its registration had been submitted, there could be no question of use liable to mislead the public within the meaning of Article 50(1)(c) of Regulation No 40/94 (now Article 51(1)(c) of Regulation No 207/2009). The Court therefore merely stated that that provision was not applicable. The first complaint must therefore be rejected. By a second complaint, the applicant disputes the Board of Appeal’s assessment relating to the Waterford Study which is set out in paragraphs 53 and 54 of the contested decision. The applicant submits that the distinction which the Board of Appeal made between a ‘survey’ and an ‘opinion poll’ is unfounded and that they have the same probative value. It argues that there are no obligatory methods for conducting a survey or an opinion poll and that the fact that the Waterford Study was conducted via ‘online access panels’ is not a reason to reject it. It contends that the fact that the Waterford Study was conducted on the basis of a panel of people who complete surveys in exchange for reward does not mean that their responses were influenced. The applicant submits that, according to EUIPO’s practice, the validity of an opinion poll or of a survey is determined by the status and independence of the entity which conducts it. It states that the Waterford Study was carried out by a specialised agency, on 1 000 people. According to settled case-law, the principle which prevails in EU law is that of the unfettered evaluation of evidence, from which it follows, in particular, that the only relevant criterion for the purpose of assessing the probative value of evidence lawfully adduced relates to its credibility. Thus, in order to assess the probative value of a document, it is necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on the face of it, the document appears sound and reliable (see judgments of 24 October 2018, Bayer v EUIPO – Uni-Pharma (SALOSPIR) , T‑261/17, not published, EU:T:2018:710 , paragraph 60 and the case-law cited, and of 9 September 2020, Glaxo Group v EUIPO (Shade of the colour purple) , T‑187/19, not published, EU:T:2020:405 , paragraph 92 and the case-law cited). So far as surveys in particular are concerned, their probative value depends on the survey method used (judgment of 12 July 2006, Vitakraft-Werke Wührmann v OHIM – Johnson’s Veterinary Products (VITACOAT) , T‑277/04, EU:T:2006:202, paragraph 38). Thus, the results of a survey may lack probative value in the case where the survey in question is not accompanied by sufficient evidence to ensure that it is reliable (see judgments of 24 October 2018, SALOSPIR , T‑261/17, not published, EU:T:2018:710 , paragraph 61 and the case-law cited, and of 9 September 2020, Shade of the colour purple , T‑187/19, not published, EU:T:2020:405 , paragraph 95 and the case-law cited). In paragraph 53 of the contested decision, the Board of Appeal pointed out that the Waterford Study was not a survey, but an opinion poll which had been conducted online. It stated that opinion polls conducted via online access panels were of limited probative value since the consumer sample was, in many cases, not representative, because it was based on ‘self-selection’ and it did not take into account the segment of the population which was not that familiar with the online environment and was not an active user of the internet. It took the view that the crucial difference was in the selection of respondents. In that regard, it stated that participants in open access polls were not chosen at all, but just selected themselves, whereas respondents taking part in scientific surveys were generally actively and systematically chosen, so that the sample composition ultimately reflected a representative cross-section of the population. The Board of Appeal pointed out that the applicant had claimed that the opinion poll had been conducted on the basis of a panel of people who completed surveys in exchange for reward points, that it had failed to disclose the methodology followed in the selection of the members of that panel, that the participants were limited to those aged between 25 and 65, thereby omitting younger and older people, and that the opinion poll did not disclose the margin of error. It follows that, contrary to what the applicant claims, the Board of Appeal did not reject the Waterford Study on the ground that it was an opinion poll and not a survey or on the ground that it had been carried out via an online access panel. The Board of Appeal relied on the fact that it was not aware of the methodology which had been used in that poll and called into question the representativeness of the panel of people who had taken part in it. In that regard, it must be stated that, contrary to what the applicant claims, the Board of Appeal did not find that the fact that the Waterford Study had been conducted on the basis of a panel of people who completed surveys in exchange for reward meant that their responses had been influenced. The Board of Appeal found that, on account of that fact, the participants in the poll had selected themselves and had not been chosen as constituting a representative sample of the population. The applicant’s argument that the Waterford Study was carried out on 1 000 people cannot call into question the fact, which was noted by the Board of Appeal, that the methodology which was used in order to select that panel was not specified and that that panel was not representative of the whole of the population, in particular in the light of the age of the participants. Likewise, the applicant’s argument that it is sufficient that the poll was conducted by an independent entity is ineffective, since it was not possible, because the methodology followed was not known, to assess whether the sample chosen was representative. It follows that the applicant has not put forward any argument which is capable of calling into question the Board of Appeal’s assessment that it did not have sufficient information to enable it to satisfy itself as to the representativeness of the panel used in the Waterford Study and therefore as to the reliability of that poll. Since, in accordance with the case-law which has been referred to in paragraph 57 above, the Board of Appeal was entitled to consider on the basis of that finding alone that the results of that poll lacked probative value, it was right in finding that the Waterford Study did not prove that the city of Waterford had a reputation in relation to the production of crystal or glass. It follows that the applicant’s argument regarding the Board of Appeal’s assessment that the first question asked in that poll was a leading question must be rejected as ineffective. For the same reason, the applicant’s arguments regarding the results of the Waterford Study, arguments which seek to establish that those results show that the city and county of Waterford have a reputation for glassware; that the geographical name Waterford is associated with the production of glassware; that the public wrongly believes that WATERFORD crystal is still manufactured in the city of Waterford and that, to the extent that the glassware marketed under the WATERFORD trade mark is not manufactured in Waterford, the relevant public is misled as to the true geographical origin of the goods, are also ineffective. Consequently, the second complaint, and therefore the single plea, must be rejected. It follows from all of the foregoing that the action must be dismissed in its entirety, without it being necessary to rule on the Board of Appeal’s assessment relating to the admissibility of the appeal brought before it. Costs Under Article 134(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads, the parties are to bear their own costs. However, if it appears justified in the circumstances of the case, the General Court may order that one party, in addition to bearing his or her own costs, pay a proportion of the costs of the other party. In the present case, in the light of all the circumstances of the case and, in particular, of the fact that EUIPO has been unsuccessful as regards the plea of inadmissibility which it has put forward and the applicant has been unsuccessful as to the substance of the case, EUIPO must be ordered to bear its own costs and the applicant must be ordered to bear its own costs and to pay the costs incurred by the intervener. On those grounds, THE GENERAL COURT (Third Chamber) hereby: 1. Dismisses the action; 2. Orders Unite the Union to bear its own costs and to pay those incurred by WWRD Ireland IPCO LLC; 3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs. De Baere Kreuschitz Steinfatt Delivered in open court in Luxembourg on 22 June 2022. E. Coulon S. Papasavvas 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