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

JUDGMENT OF THE GENERAL COURT (Third Chamber)

27 April 2016 (*)

(EU trade mark — International registration designating the European Union — Word mark NIAGARA — Absolute grounds for refusal — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009)

In Case T‑89/15,

Niagara Bottling LLC, established in Ontario, California (United States), represented by M. Edenborough QC,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Jakab, A. Schifko and D. Walicka, acting as Agents,

defendant,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 12 December 2014 (Case R 784/2014-5), concerning the international registration designating the European Union of the word mark NIAGARA,

THE GENERAL COURT (Third Chamber),

composed of S. Papasavvas, President, E. Bieliūnas (Rapporteur) and I.S. Forrester, Judges,

Registrar: M. Marescaux, Administrator,

having regard to the application lodged at the Court Registry on 23 February 2015,

having regard to the response lodged at the Court Registry on 25 June 2015,

further to the hearing on 23 February 2016,

gives the following

Judgment

 Background to the dispute

1        On 21 January 2013, the applicant, Niagara Bottling LLC, obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) an international registration designating the European Union for the word mark NIAGARA.

2        On 4 April 2013, the European Union Intellectual Property Office (EUIPO) received notification of the international registration of the sign at issue.

3        The goods in respect of which registration was applied for are in Class 32 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: ‘Bottled drinking water; bottled water; distilled drinking water; drinking water; drinking water with vitamins; drinking waters; flavo[u]red bottled water, flavo[u]red enhanced water; flavo[u]red waters; purified bottled drinking water; spring water; still water; table water; water beverages’.

4        By decision of 24 January 2014, the examiner rejected the application for registration in respect of all the goods referred to in paragraph 3 above, on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009, on the ground that the sign at issue was descriptive and devoid of any distinctive character.

5        On 20 March 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against that decision.

6        By decision of 12 December 2014 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. The Board of Appeal held that the link between the sign for which registration was sought and the goods concerned was sufficiently close for it to be considered that the sign fell within the scope of Article 7(1)(c) of Regulation No 207/2009. In particular, it held that the Niagara Falls, to which the word ‘Niagara’ refers, are known to the general public of the European Union and understood as a geographical term. Next, it stated that the first product originating from a waterfall or its region was water. Thus, the relevant public will perceive the word ‘NIAGARA’ as designating the geographical origin of the contested goods. Finally, it also held that the sign for which registration was sought was devoid of any distinctive character in relation to those goods, within the meaning of Article 7(1)(b) of Regulation No 207/2009.

 Forms of order sought

7        The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

8        EUIPO contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

 Law

9        In support of its action, the applicant raises in essence two pleas in law, alleging, respectively, infringement of Article 7(1)(c) of Regulation No 207/2009 and failure to state reasons.

10      By its first plea in law, the applicant claims that, in essence, there are no reasonable and foreseeable circumstances leading to the conclusion that the sign at issue can serve to designate the geographical origin of the goods concerned.

11      In that respect, it must be recalled that, 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’ may not be registered.

12      According to settled case-law, Article 7(1)(c) of Regulation No 207/2009 pursues an aim of 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 (see judgment of 12 June 2007 in Case T‑339/05 MacLean-Fogg v OHIM (LOKTHREAD), not published, EU:T:2007:172, paragraph 27 and the case-law cited).

13      In addition, signs or indications that can, in trade, serve to designate the characteristics of the goods or service for which registration is sought are, under Article 7(1)(c) of Regulation No 207/2009, regarded as incapable of performing the essential function of a trade mark, namely, that of identifying the commercial origin of the goods or services, thus enabling the consumer acquiring the goods or service designated by the mark, on making a further acquisition, to make the same choice, should the experience prove positive, or to make a different choice, should the experience prove negative (see judgment of 12 June 2007 in Case T‑339/05 LOKTHREAD, not published, EU:T:2007:172, paragraph 28 and the case-law cited).

14      Consequently, for a sign to be caught by the prohibition set out in that provision, it must suggest a sufficiently concrete direct link to the goods or services in question to enable the public concerned, immediately and without further thought, to perceive a description of the goods and services in question or of one of their characteristics (see judgment of 12 June 2007 in Case T‑339/05 LOKTHREAD, not published, EU:T:2007:172, paragraph 29 and the case-law cited). In that regard, it must be stated that the legislature’s choice of the word ‘characteristic’ highlights the fact that the signs referred to in that provision are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. Thus, a sign may be refused registration on the basis of Article 7(1)(c) of Regulation No 207/2009 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50 and the case-law cited).

15      As regards more specifically signs or indications that may serve to designate the geographical origin or destination of the categories of goods, or the place of performance of the categories of services, in respect of which the protection of an international registration designating the European Union is sought, especially geographical names, it is in the public interest that they 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 (see, to this effect, judgment of 15 January 2015 in MEM v OHIM (MONACO), T‑197/13, EU:T:2015:16, paragraph 47 and the case-law cited).

16      Furthermore, it should be pointed out that registration is not permitted of geographical names as trade marks if they designate specified 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 persons, on the one hand, and nor is the registration of geographical names, liable to be used by undertakings, that must also remain available to such undertakings as indications of the geographical origin of the category of goods or services concerned, on the other (see judgment of 15 January 2015 in MONACO, T‑197/13, EU:T:2015:16, paragraph 48 and the case-law cited).

17      However, it is to be observed that, in principle, Article 7(1)(c) of Regulation No 207/2009 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, or the registration of names in respect of which, because of the characteristics of the place they designate, such persons are unlikely to believe that the category of goods or services concerned originates there or was conceived of there (see judgment of 15 January 2015 in MONACO, T‑197/13, EU:T:2015:16, paragraph 49 and the case-law cited).

18      In the light of all the foregoing, a sign’s descriptiveness cannot be assessed otherwise than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant persons have of it, on the other (see judgment of 15 January 2015 in MONACO, T‑197/13, EU:T:2015:16, paragraph 50 and the case-law cited).

19      In making that assessment, EUIPO is bound to establish that the geographical name is known to the relevant class of persons as the designation of a place. What is more, the name in question must suggest a current association, in the mind of the relevant class of persons, with the category of goods or services in question, or it must be reasonable to consider that such a name may, in the view of those persons, designate the geographical origin of that category of goods or services. When that assessment is made, particular consideration should be given to the relevant class of persons’ degree of familiarity with the geographical name in question, with the characteristics of the place designated by that name, and with the category of goods or services concerned (see judgment of 15 January 2015 in MONACO, T‑197/13, EU:T:2015:16, paragraph 51 and the case-law cited).

20      In the present case and as a preliminary point, it is noteworthy, first, that even if the Board of Appeal did not explicitly define the relevant public, it did however make a reference to the public concerned in paragraphs 15, 17 and 18 of the contested decision, as being the general public of the European Union or a European consumer. Indeed, it must be stated that, the goods concerned being daily consumer goods, the relevant public is an average EU consumer, reasonably well informed and reasonably observant and circumspect.

21      Second, it should be highlighted that it is not disputed that the word ‘niagara’ is a geographical term that refers to the River Niagara and, above all, to the waterfalls of the same name known to the relevant public.

22      Therefore, in order to assess the descriptiveness of the sign NIAGARA, it must be considered whether the relevant public, seeing that sign, will perceive the geographical name as an indication of the origin of the goods covered by the mark applied for.

23      First of all, as the Board of Appeal correctly stated, it must be noted that the most important characteristic of a waterfall is its abundance of water.

24      Next, the parties agree that the goods covered by the mark applied for are water-based drinks and include the word ‘water’ in their name.

25      Last, regarding the nature of the relationship between the sign NIAGARA and the goods at issue, the Board of Appeal rightly held that the relevant public will perceive that the goods concerned originate from a geographical area in which the Niagara falls are situated.

26      Indeed, the first association that springs to mind in connection with the word ‘niagara’ is water, and this, above all, because of the famous waterfall with the same name. The fact that the Niagara Falls evoke numerous variations of association, in particular, abundance of water, the dangers that such abundance could cause, or yet a picturesque image worthy of a postcard, is irrelevant inasmuch as, for all these associations, water remains an essential common feature.

27      Thus, the word ‘niagara’ has, in the eyes of the relevant public, a link with the goods covered by the mark applied for and is capable, in the eyes of that public, of designating the geographical origin of those goods.

28      It follows that the Board of Appeal was right in the contested decision to hold that the sign was of a descriptive character, within the meaning of Article 7(1)(c) of Regulation No 207/2009.

29      That finding cannot be called into question by the arguments put forward by the applicant.

30      First, the applicant’s argument that the Board of Appeal did not, in its analysis of the descriptive character of the sign applied for, assess individually all the goods concerned must be disregarded.

31      Indeed, it is apparent from paragraph 24 above that all the goods designated by the mark applied for are water-based drinks and include the word ‘water’ in their name. Because of that important common characteristic, those goods constitute a sufficiently homogeneous group of goods.

32      The fact that certain of the goods concerned, such as distilled water, purified water, flavoured water; flavoured enhanced water or water with vitamins, have characteristics other than water is irrelevant, inasmuch as their essential element is water.

33      Consequently, the Board of Appeal was able to proceed to an overall assessment of the descriptiveness of the mark applied for in relation to the goods concerned, rather than undertaking an assessment for each of those.

34      Second, the applicant’s argument that the Niagara River and the waterfalls associated with it can in no way be described as mineral springs, in particular on the grounds that they convey the image of danger, turbulence and risk to life and limb, that is to say, the antithesis of the image of calmness, purity and health benefits conveyed by mineral springs, must be rejected. Indeed, as has previously been mentioned in paragraph 26 above, in order for the link between the name of the place and the goods concerned to make it possible for the relevant public to perceive the sign at issue as an indication of origin of those goods, it is sufficient that that public associate the geographical place with water, secondary associations being irrelevant.

35      Third, as regards the applicant’s argument that, in the EU, consumers do not consider a non-mineral spring water source, that is to say, water from a river or waterfalls, to be a source of bottled water, it is sufficient to note that the sign applied for has a sufficiently allusive nature in respect of water to hold that the mark applied is descriptive in character.

36      Fourth, as for the argument that the Board of Appeal erroneously made a link between abundance of water and drinking water, first, it should be noted that river water, as opposed to sea water, is fresh water and that fresh water is a source of drinking water. Second, it must be stated that, regardless of its source, water can be transformed into drinking water after suitable treatment.

37      Fifth, the argument that, given that there is no evidence that the word ‘niagara’ is actually used in North America as a descriptive word for bottled water, it cannot be held that it is foreseeable that that word may acquire that meaning in the EU, must be rejected too. Indeed, it must be stated that such an argument, unsubstantiated by any item of evidence, is purely speculative. At all events, it is unnecessary to establish, in that context, whether the denomination does really designate the actual geographical origin of the goods. Only the fact that the relevant public may perceive the sign as the origin of the goods at issue is important.

38      Therefore, the first plea in law must be dismissed.

39      Additionally, it must be observed that, at the hearing, the applicant claimed that its line of argument, developed in the context of the first plea in law, related also to infringement of Article 7(1)(b) of Regulation No 207/2009.

40      In that respect, it must be borne in mind that, as appears from Article 7(1)(b) of Regulation No 207/2009, for a sign to be ineligible for registration as a Community trade mark it is sufficient that one of the absolute grounds for refusal should apply (see judgment of 26 October 2000 in Community Concepts v OHIM (Investorworld), T‑360/99, EU:T:2000:247, paragraph 26 and the case-law cited).

41      It follows from the assessment of the first plea in law that the Board of Appeal was right to hold that the sign applied for was descriptive of the goods at issue and that, therefore, it could not be registered as an EU trade mark, for it is caught by the grounds for invalidity laid down in Article 7(1)(b) of Regulation No 207/2009.

42      Consequently, such a line of argument need not be examined in the light of Article 7(1)(b) of Regulation No 207/2009.

43      In its second plea in law, the applicant contends that inadequate reasons are given for the contested decision.

44      In the first place, the applicant’s claim that the Board of Appeal undertook the analysis of the descriptive character of the sign applied for from the perspective of a single product, namely ‘bottled drinking water’, and failed to state the reasons for its assessment of every product covered, should be rejected.

45      It must be stated that, according to settled case-law, although the decision to refuse registration of a trade mark must, as a rule, state the reasons in respect of each of the goods or services concerned, the competent authority may, where the same ground for refusal is given for a category or group of goods or services, use only general reasoning for all the goods and services that are sufficiently directly and specifically connected, to the point that they comprise a category or group of goods of sufficient homogeneity (see judgment of 10 September 2015 in Laverana v OHIM (ORGANIC WITH PLANT FLUID FROM OUR OWN PRODUCTION), T‑608/14, not published, EU:T:2015:621, paragraph 19 and the case-law cited).

46      In the present case, contrary to the applicant’s claim, the Board of Appeal used, in its analysis, several words to refer to the goods at issue, namely, water, drinking water, bottled water or mineral water, before finding, in paragraph 17 of the contested decision, that the relevant public will perceive all the goods at issue including the sign Niagara as originating from the Niagara region.

47      Furthermore, as appears from paragraphs 24 and 31 above, the goods covered by the mark applied for designate different types of water and constitute a sufficiently homogenous group of goods.

48      Consequently, the Board of Appeal gave proper reasons for its decision for all the goods at issue.

49      In the second place, with regard to the applicant’s argument that the Board of Appeal did not provide a statement of reasons for its decision not to take into account the earlier United Kingdom registration, it is sufficient to note that the Board of Appeal stated, in paragraph 23 of the contested decision, in essence, that the EU’s trade mark framework is an autonomous system, made of a body of rules and pursuing objectives that are specific to it, its implementation being independent of any national system (see judgment of 14 January 2015 in Melt Water v OHIM (Shape of a transparent cylindrical bottle), T‑70/14, not published, EU:T:2015:9, paragraph 43 and the case-law cited).

50      By so doing, the Board of Appeal gave sufficient reasons for its decision not to take into account the earlier UK registration.

51      Therefore, the second plea in law must be rejected.

52      It follows from all of the foregoing that the action must be dismissed.

 Costs

53      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 form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Third Chamber),

hereby:

1.      Dismisses the action;

2.      Orders Niagara Bottling LLC to bear the costs.

Delivered in open court in Luxembourg on 27 April 2016.

[Signatures]

* Language of the case: English.

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