Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE GENERAL COURT (Seventh Chamber)

24 June 2014 (*)

(Community trade mark - Invalidity proceedings - Community word mark THE SPIRIT OF CUBA - Absolute ground for refusal - Descriptive character - Article 7(1)(c) of Regulation (EC) No 207/2009)

In Case T-207/13,

1872 Holdings vof, established in Amsterdam (Netherlands), represented by M. Antoine-Lalance, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by V. Melgar, acting as Agent,

defendant,

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

Havana Club International SA, established in Havana (Cuba), represented by M. Pomares Caballero, lawyer,

ACTION brought against the decision of the First Board of Appeal of OHIM of 31 January 2013 (Case R 684/2012-1) concerning invalidity proceedings between Havana Club International SA and 1872 Holdings vof,

THE GENERAL COURT (Seventh Chamber),

composed of M. van der Woude, President, I. Wiszniewska-Białecka (Rapporteur) and I. Ulloa Rubio, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 10 April 2013,

having regard to the response of OHIM lodged at the Court Registry on 7 August 2013,

having regard to the response of the intervener lodged at the Court Registry on 23 August 2013,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge­Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 18 July 2007, the applicant, 1872 Holdings vof, was granted registration of the Community word mark THE SPIRIT OF CUBA under registration No 2109106 by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). That registration had been applied for on 1 March 2001.

2        The goods and services in respect of which the mark THE SPIRIT OF CUBA was registered are in Classes 33, 35 and 42 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 33: ‘Alcoholic beverages, namely rum and rum-based alcoholic beverages’;

-        Class 35: ‘Advertising and promotion relating to alcoholic beverages; retailing of alcoholic drinks’;

-        Class 42: ‘Consultancy in the field of alcoholic beverages, cocktails and non-alcoholic beverages’.

3        On 9 March 2011, the intervener, Havana Club International SA, applied to OHIM for a declaration that the mark THE SPIRIT OF CUBA was invalid pursuant to Article 52(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), on the grounds that that mark had been registered in breach of Article 7(1)(b), (c) and (g) of Regulation No 207/2009.

4        By decision of 8 February 2012, the Cancellation Division of OHIM granted the application for a declaration of invalidity on the basis of Article 7(1)(c) of Regulation No 207/2009, read in conjunction with Article 52(1)(a) thereof.

5        On 4 April 2012, the applicant filed a notice of appeal with OHIM against the decision of the Cancellation Division.

6        By decision of 31 January 2013 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. It held that the expression ‘the spirit of Cuba’ described the nature and content of the goods and services at issue, namely, that the particular beverage that might be in question was an alcoholic spirit from Cuba or that the services provided related to an alcoholic spirit from Cuba or to a beverage that is normally mixed with, or consumed with, an alcoholic spirit from Cuba. It concluded that the Cancellation Division had acted correctly in cancelling the registration of the mark THE SPIRIT OF CUBA on the grounds of Article 7(1)(c) of Regulation No 207/2009, read in conjunction with Article 52(1)(a) thereof.

 Forms of order sought

7        The applicant claims that the Court should:

-        annul the contested decision;

-        order OHIM to pay the costs.

8        OHIM and the intervener contend that the Court should:

-        dismiss the action;

-        order the applicant to pay the costs.

 Law

9        In support of its action, the applicant raises a single plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009.

10      Under Article 7(1)(c) of Regulation No 207/2009, 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, cannot to be registered.

11      According to the case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim in the public interest, which requires that such signs or indications may be freely used by all (Case C-191/01 P OHIM v Wrigley [2003] ECR I-12447, paragraph 31; Case T-219/00 Ellos v OHIM (ELLOS) [2002] ECR II-753, paragraph 27; and judgment of 2 May 2012 in Case T-435/11 Universal Display v OHIM (UniversalPHOLED), not published in the ECR, paragraph 14).

12      The signs and indications referred to in Article 7(1)(c) of Regulation No 207/2009 are those which may serve in normal usage from the target public’s point of view to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought (Case C-383/99 P Procter & Gamble v OHIM [2001] ECR I-6251, paragraph 39, and judgment of 22 May 2008 in Case T-254/06 Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), not published in the ECR, paragraph 28).

13      It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services concerned to enable the relevant public immediately to perceive, without further thought, a description of the category of goods and services concerned or of one of their characteristics (Case T-19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II-2383, paragraph 25, and RadioCom, cited in paragraph 12 above, paragraph 29).

14      The descriptiveness of a sign may be assessed only, first, in relation to the goods or services concerned and, secondly, in relation to the perception of the target public, which is composed of the consumers of those goods or services (Case T-34/00 Eurocool Logistik v OHIM (EUROCOOL) [2002] ECR II-683, paragraph 38, and RadioCom, cited in paragraph 12 above, paragraph 33).

15      In the present case, as regards the definition of the relevant public, the Board of Appeal found that the goods covered by the contested mark in Class 33 and the services of ‘retailing of alcoholic drinks’ in Class 35 were directed at the public at large and that the other services covered by the contested mark in Classes 35 and 42 were primarily of interest to businesses operating in the beverages sector. In addition, it took the view that, as the words composing the contested mark are basic words of the English language, the relevant public was made up of English-speaking consumers within the European Union.

16      The applicant argues that the definition of the relevant public adopted by the Board of Appeal is incorrect, on the ground that the relevant public is composed of all European Union consumers and not only of English-speaking consumers.

17      In this connection, it should be observed that, where the sign at issue is composed of elements from the English language, the public by reference to which the existence of an absolute ground for refusal must be assessed is an English-speaking public (judgments of 29 March 2012 in Case T-242/11 Kaltenbach & Voigt v OHIM (3D eXam), not published in the ECR, paragraph 26, and of 11 July 2012 in Case T-559/10 Laboratoire Garnier v OHIM (natural beauty), not published in the ECR, paragraph 20).

18      Article 7(2) of Regulation No 207/2009 states that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union. That provision implies that, if a combination of words is purely descriptive in one of the languages used in trade within the European Union, that is sufficient to render it ineligible for registration as a Community trade mark (Procter & Gamble v OHIM, cited in paragraph 12 above, paragraph 41).

19      Therefore, it must be held that, taking account of the fact that the contested mark was composed of English-language words, the Board of Appeal acted correctly in assessing the descriptive nature of that mark by reference solely to an English-speaking public.

20      As regards the meaning of the expression ‘the spirit of Cuba’ comprising the contested mark, the Board of Appeal took the view that the word ‘Cuba’ designated the island State of that name in the Caribbean, that the word ‘spirit’ designated, inter alia, a liquid obtained by distillation, specifically one which is of an alcoholic nature (alcoholic spirit), a category which includes rum. It observed that it was not disputed that Cuba is well known historically for its rum industry. The Board of Appeal took the view that the use of the definite article ‘the’ had no impact on the perception of the contested mark and that the expression ‘the spirit of Cuba’ was grammatically correct and did not constitute an expression that was unusual or surprising in the English language so far as the goods and services at issue were concerned, that is to say, alcoholic beverages or services rendered in connection with alcoholic beverages or other beverages mixed with or consumed alongside alcoholic beverages.

21      The Board of Appeal held that the expression ‘the spirit of Cuba’ described the nature and content of the goods and services at issue, namely, that the particular beverage that might be in question was an alcoholic spirit from Cuba or that the services rendered concerned an alcoholic spirit from Cuba or a beverage that is normally mixed with, or consumed with, an alcoholic spirit from Cuba.

22      The applicant claims that the Board of Appeal erred in holding that the expression ‘the spirit of Cuba’ described an alcoholic beverage from Cuba or a service rendered concerning an alcoholic beverage from Cuba. It argues that the Board of Appeal did not analyse the contested mark in its entirety. It claims that the Board of Appeal failed to take account of the fact that the expression ‘the spirit of’ is common in English and has an abstract meaning, namely, ‘the soul of’, ‘the essence of’, a ‘mood of’ or ‘intention of’. The applicant states that the definite article ‘the’ highlights the expression ‘spirit of Cuba’ as being something unique and that the word ‘spirit’, when it is in the non-plural form, refers to the soul and not to alcohol. In order to designate a strong alcoholic beverage obtained by distillation, the word would, it submits, be ‘spirits’, in the plural form. Furthermore, the preposition ‘of’ is distinct from the preposition ‘from’, the latter indicating a source. According to the applicant, English-speaking consumers would perceive the expression ‘the spirit of Cuba’ as meaning solely ‘the soul of Cuba’, ‘the character or the mood of Cuba’ or ‘the substance or essence of Cuba’.

23      According to settled case-law, in order to be caught by Article 7(1)(c) of Regulation No 207/2009, it is sufficient that the word sign, under at least one of its possible meanings, designates a characteristic of the goods or services concerned (OHIM v Wrigley, cited in paragraph 11 above, paragraph 32, and Case T-28/10 Euro-Information v OHIM (EURO AUTOMATIC PAYMENT) [2011] ECR II-1535, paragraph 50).

24      Suffice it to state, as the Board of Appeal has done, that it is apparent from the extracts from several English dictionaries, inter alia those provided by the applicant itself and included in OHIM’s file, that the word ‘spirit’, in the singular form, designates, inter alia, an alcoholic beverage obtained by distillation (‘distilled alcoholic liquor such as whisky or gin’, ‘strong distilled alcoholic drink such as brandy, whisky, gin or rum’).

25      It is true that the dictionaries indicate that the term is ordinarily used in the plural form. However, contrary to what the applicant claims, this does not mean that the word ‘spirit’ designates an alcoholic beverage only when it is in the plural form.

26      Therefore, the finding that under at least one of its meanings the word ‘spirit’ means ‘alcoholic spirit, alcoholic beverage’ is sufficient for it to be held that the Board of Appeal acted correctly in taking the view that the expression ‘the spirit of Cuba’ would be understood, by the relevant public, as a reference to the alcoholic spirit of Cuba or to the alcoholic beverage of Cuba.

27      Contrary to what the applicant claims, the use of the word ‘of’ establishes clearly that the beverage originates in Cuba and the expression ‘the spirit of Cuba’ does not have a meaning which is fundamentally different from that of the expression ‘the spirit from Cuba’.

28      It must also be held that the Board of Appeal was right to take the view that the definite article ‘the’ did not have any impact on the perception of the contested mark, since the expressions ‘spirit of Cuba’ and ‘the spirit of Cuba’ have the same descriptive character in the light of the goods and services at issue.

29      Consequently, the Board of Appeal was fully entitled to conclude that the contested mark was descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009.

30      That conclusion is not called into question by the applicant’s other arguments.

31      In the first place, the applicant submits, first, that the mark THE SPIRIT OF CUBA has been registered in the United States, where it has not been regarded as descriptive, and, secondly, that marks similar to the contested mark have been registered in the United Kingdom in respect of alcoholic beverages in Classes 32 and 33.

32      It should be recalled that the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (Case T-32/00 Messe München v OHIM (electronica) [2000] ECR II-3829, paragraph 47). Consequently, the registrability of a sign as a Community trade mark must be assessed by reference only to the relevant Community rules. OHIM, and, as the case may be, the Courts of the European Union are not bound by a decision given in a Member State, or in a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was taken under national legislation harmonised pursuant to 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), or indeed in a country belonging to the linguistic area in which the sign in question originated (Case T-106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II-723, paragraph 47).

33      The applicant argues, in the second place, that numerous word marks having the same structure as, or a structure similar to, that of the contested mark have been registered by OHIM in respect of alcoholic beverages in Classes 32 and 33.

34      Suffice it to point out that, according to settled case-law, decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the question whether a sign may be registered as a Community trade mark must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of any previous practice of the Boards of Appeal (see Case C-37/03 P BioID v OHIM [2005] ECR I-7975, paragraph 47, and UniversalPHOLED, cited in paragraph 11 above, paragraph 37 and the case-law cited).

35      The Court of Justice has, it is true, held that, in the light of the principles of equal treatment and sound administration, OHIM must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (Case C-51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I-1541, paragraph 74).

36      However, the Court of Justice added that, that said, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a trade mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (Agencja Wydawnicza Technopol v OHIM, cited in paragraph 35 above, paragraphs 75 to 77).

37      In the present case, inasmuch as it has been held that the Board of Appeal was fully entitled to conclude that, in respect of the goods and services at issue, the mark THE SPIRIT OF CUBA had been registered in breach of one of the grounds for refusal set out in Article 7(1) of Regulation No 207/2009, the applicant cannot profitably rely, for the purposes of invalidating that conclusion, on OHIM’s earlier decisions.

38      Moreover, the intervener contends that the documents produced for the first time before the Court and annexed to the application cannot be taken into consideration.

39      The Court observes that the purpose of the action before it is to review the legality of a decision of the Boards of Appeal of OHIM within the meaning of Article 65 of Regulation No 207/2009. It is therefore not the Court’s function to re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. Admission of such evidence is contrary to Article 135(4) of the Court’s Rules of Procedure, which prohibits the parties from changing the subject-matter of the proceedings before the Board of Appeal (Case T-128/01 DaimlerChrysler v OHIM (Grille) [2003] ECR II-701, paragraph 18). Consequently, the evidence produced by the applicant for the first time before the Court must be rejected and there is no need to examine its probative value.

40      It follows from the foregoing that the single plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009, must be rejected and, consequently, the action must be dismissed in its entirety.

 Costs

41      Under Article 87(2) of the Rules of Procedure, 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 OHIM and the intervener.

On those grounds,

THE GENERAL COURT (Seventh Chamber)

hereby:

1.      Dismisses the action;

2.      Orders 1872 Holdings vof to pay the costs.

Delivered in open court in Luxembourg on 24 June 2014.

[Signatures]

* Language of the case: English.