The European Court of Justice ruled on October 25 that Devin, the name of a town in Bulgaria, can be registered as an EU trade mark for mineral water.
The court’s decision overturns a ruling by the European Union Intellectual Property Office (EUIPO) in January 2016 that upheld an objection by the Haskovo Chamber of Commerce and Industry to EUIPO’s January 2011 registration of Devin as an EU trade mark for non-alcoholic drinks.
Part of the case revolved on claims that Devin was known as a spa town not only to Bulgarian but also to consumers in neighbouring countries such as Greece and Romania.
In a statement, the court said that EUIPO had “in essence, found that the town of Devin in Bulgaria was known to the general public in Bulgaria and a significant proportion of consumers in neighbouring countries such as Greece and Romania, especially as a renowned spa town, and that the name of that town was linked by the relevant public with the designated goods covered by the contested mark, especially mineral waters”.
After EUIPO declared the mark invalid in its entirety, the company Devin AD brought an action before the General Court seeking annulment of the decision of EUIPO.
By the October 25 2018 judgment, the General Court annuls the decision of EUIPO.
“The General Court notes first that, for the Bulgarian consumer, even if he recognises the word ‘devin’ as a geographical name, it seems extremely implausible that the trade mark DEVIN has not acquired, at least in Bulgaria, a normal distinctive character, without there being any need to rule on its reputation.
“With regard to the average Greek or Romanian consumer, the General Court notes that the existence of a ‘tourist profile on the internet’, in itself, does not suffice to establish the knowledge of a small town by the relevant public abroad,” the court said.
Furthermore, the fact that the town of Devin has a ‘considerable tourism infrastructure’ does not warrant the conclusion that such a consumer could have knowledge of the town beyond its borders or establish a direct link with it, the court ruled.
“The General Court points out that EUIPO, by wrongly focusing on foreign tourists, in particular Greeks or Romanians, who visit Bulgaria or Devin, did not take into consideration the entire relevant public, consisting of the average consumer of the EU, in particular from those member states.”
In that regard, the General Court considers that that the average consumer of mineral water and beverages in the EU does not have a high degree of specialisation in geography or tourism and that there is no specific evidence to establish that such a consumer perceives the word ‘devin’ as a geographical place in Bulgaria, the court said.
As regards the availability of the geographical name for other parties, the General Court notes that, under legislation and the case-law, a descriptive use of the name ‘Devin’ is still permitted in order to promote the town as a tourist destination and that the contested mark cannot therefore constitute an impediment to the economic efforts to develop, beyond the borders of Bulgaria, the reputation of the town of Devin for its spa waters.
The General Court also points out that EU law provides, in the very definition of the exclusive right conferred by a mark, safeguards to protect the interests of third parties.
First, the protection of the function of indicating the origin of the trade mark covers its use for identical or similar goods (or services) only and requires a risk of confusion on the part of the relevant public, which is assumed in the case of double identity of signs and goods.
Secondly, the protection of the advertising function of a reputed trademark also covers dissimilar products, but requires a risk of dilution, tarnishing or free-riding and, in addition, does not cover uses with a ‘due cause’.
“In the present case, the name of the town of Devin therefore remains available to third parties not only for descriptive use, such as the promotion of tourism in that town, but also as a distinctive sign in cases of ‘due cause’ and where there is no likelihood of confusion.”
The general interest in preserving the availability of a geographical name such as that of the spa town of Devin can be protected by allowing descriptive uses of such names and by means of safeguards limiting the exclusive right of the proprietor of the contested mark, without requiring cancellation of that mark, the court said.
According to the General Court, it is this necessary balance between the rights of the proprietors and the interests of third parties which allows the registration of trade marks originating from an eponymous geographical name, such as the EU word marks VITTEL and EVIAN, under certain conditions.
“The General Court concludes that EUIPO has not established the existence of a sufficient degree of recognition of the town of Devin by the average EU consumer, in particular Greek or Romanian consumers.
“The proportion of EU consumers who know the town of Devin must be considered to be very small,” the court said./IBNA