JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
5 March 2025 (*)
( EU trade mark – Invalidity proceedings – EU word mark Matjesfilethappen nach ‘Kolberger Art’ – Absolute grounds for invalidity – No distinctive character – Descriptive character – No distinctive character acquired through use – Article 7(1)(b) and (c) and (3) of Regulation (EU) 2017/1001 )
In Case T‑89/24,
Kapitan Navi Elżbieta Stramek i Waldemar Karpiński sp.j., established in Trzebiatów (Poland), represented by A. Brudnoch, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by R. Raponi, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Homann Feinkost GmbH, established in Bad Essen (Germany), represented by C. von Nussbaum, lawyer,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, G. Hesse and I. Dimitrakopoulos (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Kapitan Navi Elżbieta Stramek i Waldemar Karpiński sp.j., seeks the annulment and the alteration of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 December 2023 (Case R 287/2023‑5) (‘the contested decision’).
Background to the dispute
2        On 21 January 2021, the intervener, Homann Feinkost GmbH, filed an application for a declaration of invalidity with EUIPO in respect of the EU trade mark which had been registered following an application filed by the applicant on 9 October 2017, pursuant to 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), for the word sign Matjesfilethappen nach ‘Kolberger Art’.
3        The goods covered by the contested mark in respect of which a declaration of invalidity was sought were in Class 29 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 corresponded to the following description: ‘Fish, not live; Pickled fish; Fish, preserved; Salted fish; Fish fillets; Fish jellies; Fish-based foodstuffs; Kipper fillets; Herrings, not live’.
4        The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) and (c) thereof.
5        On 5 December 2022, the Cancellation Division upheld the application for a declaration of invalidity on the basis of Article 7(1)(c) of Regulation 2017/1001, on the ground that the contested mark was descriptive.
6        On 3 February 2023, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
7        By the contested decision, the Board of Appeal dismissed the appeal. It found that the contested mark was descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001, because it was reasonable to assume that, on the date on which the application for registration of that mark was filed, the relevant German-speaking public would perceive that mark as a descriptive, informational indication of the recipe or style according to which the goods at issue are prepared or marinated. The Board of Appeal also found that the contested mark was devoid of any distinctive character within the meaning of Article 7(1)(b) of that regulation and that the applicant had not shown that that mark had acquired distinctive character for the goods at issue in consequence of the use which has been made of it, within the meaning of Article 7(3) of thereof.
Forms of order sought
8        The applicant claims that the Court should:
–        annul the contested decision;
–        reject the application for a declaration of invalidity of the contested mark or, in the alternative, refer the case back to EUIPO for reconsideration;
–        order EUIPO and the intervener to pay the costs and to reimburse the costs incurred by the applicant.
9        EUIPO contends that the Court should:
–        dismiss the action in its entirety;
–        order the applicant to pay the costs incurred by EUIPO in the event that a hearing is convened.
10      The intervener contends that the Court should:
–        dismiss the application for annulment of the contested decision;
–        order the applicant to pay the costs incurred before EUIPO and the Court.
Law
Admissibility of certain annexes to the application
11      EUIPO submits that Annexes A.06 to A.08 and A.11 to A.23 to the application were submitted for the first time before the Court and must therefore be declared inadmissible. The intervener submits that, in addition to those annexes, Annex A.10 to the application was also produced for the first time before the Court and must be declared inadmissible.
12      Those annexes consist, first, of articles on herring (Annex A.06) and on the city of Kołobrzeg (Poland) (Annex A.07) and practical information on the Polish List of Traditional Products (Annex A.08), secondly, of an ‘overview of Matjeshappen nach Kolberger Art sales’, drawn up by a sales specialist (Annex. A.10), a printout of information about a German agricultural society (Annex. A.11), copies of prize certificates granted to the applicant by that society (Annex A.12), a printout from a website indicating the list of stores in Germany of two large retail chains (Annex A.13) and, lastly, of extracts from promotional newspapers from those two large retail chains (Annexes A.14 to A.23). Those annexes were submitted in order to dispute, first, the Board of Appeal’s assessment, based on arguments and evidence submitted by the intervener, that the city of Kołobrzeg has a long tradition of recipes for herring and, secondly, that the evidence submitted by the applicant did not demonstrate that the contested mark had acquired distinctive character in consequence of the use which has been made of it.
13      Those documents were produced for the first time before the Court. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Furthermore, those documents relate to matters of fact that it was for the parties to provide before EUIPO.
14      In the light of the foregoing, the abovementioned documents must be excluded, without it being necessary to assess their probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
Substance
15      In support of its action, the applicant relies on three pleas in law, the first alleging infringement of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(c) thereof, the second alleging infringement of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) thereof, and the third alleging infringement of Article 59(2) of Regulation 2017/1001, read in conjunction with Article 7(3) thereof.
The first plea, alleging infringement of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(c) thereof
16      The applicant submits that the Board of Appeal erred in finding that the contested mark was descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001.
17      EUIPO and the intervener dispute the applicant’s line of argument.
18      Under Article 59(1)(a) of Regulation 2017/1001, 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.
19      The relevant date for the purpose of assessing an application for a declaration of invalidity based on Article 59(1)(a) of Regulation 2017/1001 is that of the filing of the application for registration of the contested mark (see, to that effect, orders of 23 April 2010, OHIM v Frosch Touristik, C‑332/09 P, not published, EU:C:2010:225, paragraphs 41 to 45 and the case-law cited, and of 4 October 2018, Safe Skies v EUIPO, C‑326/18 P, not published, EU:C:2018:800, paragraphs 5 and 6 and the case-law cited).
20      Article 7(1)(c) of Regulation 2017/1001 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. Under Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
21      Those signs or indications 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 (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37).
22      By prohibiting the registration as trade marks of such signs and indications, Article 7(1)(c) of Regulation 2017/1001 pursues an aim which is in the public interest, namely, that descriptive signs or indications relating to the characteristics of goods or services in respect of 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 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31 and the case-law cited).
23      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 in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (see judgments of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25 and the case-law cited).
24      It should be borne in mind that the fact that the EU legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation 2017/1001 are merely those which serve to designate a property, easily recognisable by the relevant public, of the goods or the services in respect of which registration is sought. Consequently, a sign can be refused registration on the basis of that provision only if it is reasonable to believe that it will actually be recognised by the relevant public as a description of one of those characteristics (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50, and of 3 July 2013, Airbus v OHIM (NEO), T‑236/12, EU:T:2013:343, paragraph 32).
25      Accordingly, a sign’s descriptiveness cannot be assessed other 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 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).
–       The relevant public
26      In paragraph 43 of the contested decision, the Board of Appeal found that the goods covered by the contested mark were basically herrings, fish and fish-based foodstuffs. Next, in paragraph 44 of that decision, the Board of Appeal found that that mark was meaningful in German and, in essence, that it was therefore necessary to focus the analysis of the descriptive or distinctive character of the contested mark on German-speaking consumers in the European Union, including those who are familiar with Polish specialities.
27      The applicant disputes that latter assessment, claiming, first, that German consumers must, in particular, be identified as the ‘target public’ given that the goods covered by the contested mark are marketed and distributed in Germany and, secondly, that there is no need to identify the consumers concerned on the basis of familiarity with Polish specialities.
28      In that regard, it should be noted, first, that the fact relied on by the applicant that the goods covered by the contested mark are marketed in Germany is irrelevant. Furthermore, in its assessment of the descriptive character of the contested mark, the Board of Appeal took into consideration, in particular, German consumers, as is apparent from paragraphs 57 and 66 of the contested decision.
29      Secondly, the Board of Appeal did not take the view that the ‘target consumers’ were German-speaking consumers familiar with Polish specialities. It merely stated that German-speaking consumers included consumers familiar with those specialities. Account may be taken, within the relevant public, inter alia, of consumers with specific knowledge (see, to that effect, judgment of 19 July 2017, Lackmann Fleisch- und Feinkostfabrik v EUIPO (медведь), T‑432/16, not published, EU:T:2017:527, paragraph 31).
30      Consequently, since the contested mark is composed of terms that have a meaning in German, the Board of Appeal did not make an error of assessment in finding, in essence, in paragraph 44 of the contested decision, that it should focus its analysis of the descriptive or distinctive character of that mark on German-speaking consumers, including those who are familiar with Polish specialities.
–       The descriptive character of the contested mark in relation to the goods at issue
31      In the first place, the Board of Appeal found, in paragraphs 45 to 47 of the contested decision, that the contested mark was a word mark consisting of two word elements, namely ‘Matjesfilethappen’ and ‘nach “Kolberger Art”’. It also noted that the first of those elements meant ‘herring morsels’ and directly referred to the goods covered by the contested mark, namely ‘Fish, not live; Pickled fish; Fish, preserved; Salted fish; Fish fillets; Fish jellies; Fish-based foodstuffs; Kipper fillets; Herrings, not live’, and the second of those elements meant ‘Kolberg-style’ in German. The applicant does not dispute those assessments by the Board of Appeal.
32      In the second place, the Board of Appeal examined, in paragraphs 51 to 53 of the contested decision, certain items of evidence submitted by the intervener during the administrative procedure, namely an article taken from the German website www.travelnetto.de, which is entitled ‘Rezept für Hering geschützt, nach Kolberger Art’ (protected recipe for Kolberg-style herring), which states, inter alia, that the traditional recipe ‘śledzik kołobrzeski’, translated as ‘herring nach Kolberger Art’ (Kolberg-style herring) in that article, is included in the Polish List of Traditional Products, as well as an article from the website of the Polish Ministry of Agriculture, which mentions, inter alia, a cookbook entitled ‘Pommersches Kochbuch’ (Pomeranian Cookbook), published in 1925 in German, which contains recipes for herring dishes from Kolberg. It considered that that evidence showed that the city of Kołobrzeg, the former German name of which is Kolberg, had a long tradition of herring recipes. It therefore took the view, as is apparent from paragraph 66 of the contested decision, that the city of Kołobrzeg was known, at least by a non-negligible part of German consumers, for its herring recipes.
33      The applicant does not dispute that Kolberg is the former German name of the town of Kołobrzeg. By contrast, it disputes the Board of Appeal’s assessments referred to in paragraph 32 above, claiming, first, that, contrary to what the Board of Appeal stated in paragraphs 51 to 53 of the contested decision, herring is not a product unambiguously associated with the city of Kołobrzeg and the region of Western Pomerania. Herring is a very popular dish throughout Poland and Europe and not specifically in that city. Furthermore, although it is clear that Kołobrzeg, being a coastal city, is renowned for its fish, certain articles relating to that town, submitted by the intervener during the administrative procedure, do not mention herring.
34      In that regard, it should be noted that the Board of Appeal’s assessment that the city of Kołobrzeg, the former German name of which is Kolberg, has a long tradition of herring recipes, based on the evidence referred to in paragraphs 51 to 53 of the contested decision, is not called into question by the fact, relied on by the applicant, that herring is a very popular dish in other cities or regions of Europe. It is also irrelevant that certain articles relating to the city of Kołobrzeg do not mention herring, but other types of fish. In that regard, by stating in the application that ‘it is obvious that as a seaside town, the city is famous for its fish’, the applicant reinforces the clear link between the town of Kołobrzeg, the former German name of which is Kolberg, and the goods at issue, which are herring, fish and fish-based foods.
35      Secondly, the applicant claims that the Board of Appeal erred in relying on the fact that the recipe at issue was included in the Polish List of Traditional Products. Inclusion on the list does not demonstrate that it has been well known to the general public for a long time. Moreover, the name of a recipe included on that list is not protected. The recipe in question could therefore bear a name other than that included on that list. Furthermore, it is unlikely that German-speaking consumers would analyse that list, which serves as archives of cultural and culinary heritage. Finally, Article 7 of Regulation 2017/1001 does not provide that a trade mark may be declared invalid on the basis of a circumstance such as the inclusion of a recipe in a list of traditional products.
36      In that regard, it should be noted at the outset that, contrary to what the applicant claims, the Board of Appeal did not find that the contested mark was descriptive on the ground that the product ‘Kolberg-style herring morsels’ was included in a list of traditional products maintained by the Polish Ministry of Agriculture. It relied solely on that fact, which was apparent from the article taken from the German website www.travelnetto.de on the city of Kolberg, submitted by the intervener, in order to reach the conclusion, also based on other evidence, that the city of Kołobrzeg was known, by at least a non-negligible part of German consumers, for its herring recipes.
37      The Board of Appeal was entitled to rely on that list to support that conclusion, since, first, as EUIPO pointed out in its response, it is apparent from the evidence, submitted by the intervener during the administrative proceedings, that, in order to be included on that list, a product must have been used for at least 25 years and form part of the identity of a given community and region, which is not, moreover, disputed specifically and precisely by the applicant, and, secondly, the fact that the recipe ‘Kolberg-style herring’ was included on that list was apparent from the German website intended for German speakers referred to in paragraph 53 of the contested decision.
38      Lastly, as regards the applicant’s argument that the recipe in question may bear a name other than ‘śledzik kołobrzeski’ and, consequently, than ‘herring nach Kolberger Art’ in German, it must be borne in mind that it is irrelevant whether there are other signs or indications which are more customary than those of which the mark at issue consists, or synonyms to designate the same characteristics of the goods or services referred to in the application for registration. Although Article 7(1)(c) of Regulation 2017/1001 provides that, in order to fall within the ground for refusal of registration set out therein, the trade mark must consist ‘exclusively’ of signs or indications which may serve to designate characteristics of the goods or services concerned, it does not require that the signs or indications in question should be the only way of designating such characteristics (see, by analogy, judgments of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraphs 57 and 101, and of 14 September 2022, Task Food v EUIPO – Foodtastic (ENERGY CAKE), T‑686/21, not published, EU:T:2022:545, paragraph 67).
39      Thirdly, the applicant submits that the goods at issue were not prepared in accordance with the recipe included in the Polish List of Traditional Products.
40      In that regard, it should be noted, as observed by EUIPO, that the specific way in which the herring morsels marketed by the applicant are prepared is liable to change. It cannot therefore have any bearing on the assessment of the registrability of the contested mark.
41      Fourthly, even if it were established, the fact, relied on by the applicant, that it was the first to use the word element ‘Kolberger’ on the German market, is irrelevant.
42      It should be borne in mind that, where EUIPO refuses registration on the basis of Article 7(1)(c) of Regulation 2017/1001, it is sufficient, as the very wording of that provision indicates, that such signs and indications could be used for purposes that are descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services (see, to that effect, order of 9 December 2009, Prana Haus v OHIM, C‑494/08 P, not published, EU:C:2009:759, paragraph 52 and the case-law cited).
43      Consequently, the applicant’s arguments are not capable of calling into question the Board of Appeal’s assessments referred to in paragraph 32 above.
44      In the third place, the Board of Appeal also found, in paragraph 54 of the contested decision, that the intervener had shown that there was a certain custom in trade in Germany, in particular as regards herring morsels, which consisted of differentiating those products by the local origin or treatment thereof by adding that information with the construction ‘nach … Art’, such as ‘Matjesfilet nach nordischer Art’ (Nordic-style herring fillets), ‘Matjeshappen nach Danziger Art’ (Danzig-style herring morsels), ‘Heringsfilet Büsumer Art’ (Büsum-style herring fillets), ‘Matjes nach Rügen Art’ (Rügen-style herring) and ‘Herring nach Schwedischer Art’ (Swedish-style herring). The applicant does not dispute this assessment of the Board of Appeal.
45      Consequently, it must be held that the Board of Appeal correctly found, in paragraph 57 of the contested decision, that, having regard to the goods at issue, which consist of fish and herring morsels, as well as the characteristics of the town of Kolberg, and in particular the structure of the contested mark, which does not merely reproduce the former German name ‘Kolberg’, but reproduces first the goods at issue, namely ‘Matjesfilethappen’ followed by a customary phrase ‘nach “Kolberger Art”’, at least a relevant part of German consumers would consider that phrase as descriptive in the sense that it indicated a way to prepare that fish.
46      In the light of the foregoing, it has not been demonstrated that the Board of Appeal made an error of assessment in concluding, in paragraph 67 of the contested decision, that it was reasonable to assume that on the filing date the relevant German-speaking public would perceive the contested mark as a descriptive, informational indication of the recipe or style according to which the goods at issue are prepared or marinated.
47      It follows that the Board of Appeal was fully entitled to find that the contested mark was descriptive of the goods at issue for the purposes of Article 7(1)(c) of Regulation 2017/1001.
48      The first plea must therefore be rejected.
The second plea, alleging infringement of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) thereof
49      The applicant submits that the Board of Appeal erred in finding that the contested mark was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
50      EUIPO and the intervener dispute the applicant’s line of argument.
51      It should be noted that, as is clear from Article 7(1) of Regulation 2017/1001, it is sufficient that one of the absolute grounds for refusal applies in order for the sign at issue not to be registrable as an EU trade mark (judgments of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29, and of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI), T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 74).
52      Consequently, since, as is apparent from paragraph 47 above, the Board of Appeal was fully entitled to find that the contested mark was descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001 and that that ground alone justified upholding the invalidity proceedings brought against that mark, the plea alleging infringement of Article 7(1)(b) of that regulation must be rejected as ineffective (see, to that effect, judgments of 14 September 2022, ENERGY CAKE, T‑686/21, not published, EU:T:2022:545, paragraph 84, and of 1 February 2023, Krematorium am Waldfriedhof Schwäbisch Hall v EUIPO (aquamation), T‑319/22, not published, EU:T:2023:30, paragraph 44).
The third plea, alleging infringement of Article 59(2) of Regulation 2017/1001, read in conjunction with Article 7(3) thereof
53      In the context of the present plea, the applicant submits, in essence, that the Board of Appeal erred in finding that the contested mark had not acquired distinctive character in consequence of the use which has been made of it.
54      EUIPO and the intervener dispute the applicant’s line of argument.
55      It must be borne in mind that, under Article 59(2) of Regulation 2017/1001, where an EU trade mark has been registered in breach of the provisions of Article 7(1)(b), (c) or (d) thereof, it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.
56      Moreover, under Article 7(3) of Regulation 2017/1001, the absolute grounds for refusal referred to in Article 7(1)(b) to (d) of that regulation do not preclude the registration of a trade mark if it has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.
57      In invalidity proceedings on absolute grounds for refusal, the proprietor of the contested mark is required to prove that the contested mark had acquired such character either before the date of filing of the application for registration or between the date of its registration and the date of the application for a declaration of invalidity (see, to that effect, judgment of 25 April 2018, Romantik Hotels & Restaurants v EUIPO – Hotel Preidlhof (ROMANTIK), T‑213/17, not published, EU:T:2018:225, paragraph 50 and the case-law cited).
58      The use of the trade mark within the meaning of Article 7(3) of Regulation 2017/1001 or Article 59(2) of that regulation must be understood as referring to use of the mark for the purposes of the identification, by the relevant public, of the product or service as originating from a given undertaking (see, by analogy, judgment of 7 July 2005, Nestlé, C‑353/03, EU:C:2005:432, paragraph 29). Therefore, not every use of the mark amounts necessarily to use as a trade mark (see, by analogy, judgment of 22 June 2006, Storck v OHIM, C‑24/05 P, EU:C:2006:421, paragraph 62).
59      In order to assess whether a mark has acquired distinctive character through use, account must be taken of factors such as the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the significance of the investments by the undertaking in promoting the mark; the proportion of the relevant public who, because of the mark, identify the goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations and opinion polls (see, to that effect, judgment of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 75 and the case-law cited).
60      In the present case, the evidence relied on by the applicant before EUIPO in order to demonstrate that the contested mark had acquired distinctive character in consequence of the use which had been made of it consists, in essence, first, in a VAT invoice, prize certificates granted to it, reports on the labels of the goods at issue, an overview of sales of those goods from 2010 to 2020, printouts of opinions on the goods at issue and extracts from magazines from German retail chains, which were submitted before the Cancellation Division, and, secondly, in a study of sales data from the German market relating to the marinated fish segment for the years 2020 to 2022 from Nielsen (‘the Nielsen study’), which was submitted before the Board of Appeal.
61      The Board of Appeal analysed, in paragraphs 84 to 92 of the contested decision, all the evidence of use of the contested mark submitted by the applicant during the administrative proceedings.
62      In the first place, as regards the evidence submitted before the Cancellation Division, the Board of Appeal found that it demonstrated the presence of a product based on herring morsels on the German market, which is marketed under the applicant’s ‘house mark’, which is a figurative mark depicting the head of a captain and the word elements ‘kapitan navi’. It also found that, from the depictions of the contested mark as used, it did not become clear whether that mark would be perceived as a sub-brand of the applicant since, on some occasions, a description of the recipe appears next to the indication ‘Matjesfilethappen nach “Kolberger Art”’, which indicates that the contested mark will be perceived as a product description and not as a trade mark. It added that, in any event, the evidence submitted by the applicant before the Cancellation Division was by far not enough to meet the requirements established by the case-law, since it did not show that consumers regarded the contested mark as a trade mark and, in particular, that it was known as such by a significant part of the relevant public.
63      The applicant disputes those findings of the Board of Appeal, claiming that the prize certificates granted to it clearly indicate that the award is for the mark ‘Matjesfilethappen nach “Kolberger Art”’. It adds that it is logical that the manufacturer’s data should also be indicated on an award given for a product. It is also logical that, in addition to the contested mark, food information should appear on the labels. That information is, however, distinct from the contested mark. Furthermore, the applicant observes that, on the market for herring products, the inclusion of the manufacturer’s trade mark next to the product name is a common practice. However, that cannot unequivocally determine that the designation ‘Matjesfilethappen nach “Kolberger Art”’ will not be perceived by consumers as a trade mark.
64      In that regard, it should be noted that, on the various prize certificates granted to the applicant, the contested mark is accompanied by the word elements ‘kapitan navi’, which, on most of the certificates, directly precede the contested mark. Furthermore, on almost all of those certificates, the contested mark is directly followed by an indication of quantity (300 g or 800 g). It is therefore not clear whether the prize was awarded to the mark Matjesfilethappen nach ‘Kolberger Art’ or to the mark KAPITAN NAVI for the product ‘Matjesfilethappen nach “Kolberger Art”’.
65      Furthermore, the argument that the information on the food data on the goods at issue differs from the contested mark does not call into question the fact that that mark, as shown on the goods at issue, as is apparent from the photographs or images in the reports on the labels of the goods at issue and extracts from magazines from German retail chains, is accompanied by the figurative mark depicting the head of a captain and the word elements ‘kapitan navi’. The applicant has not established that the relevant public also perceives the word elements ‘Matjesfilethappen nach “Kolberger Art”’, which are directly descriptive of the goods at issue, as an indication of the commercial origin of those goods, and not only that figurative mark.
66      The analysis set out in paragraphs 64 and 65 above is not called into question by the applicant’s assertion that, on the market for herring goods, the inclusion of the ‘manufacturer’s trade mark’ next to the product name is a common practice, given that the applicant has not shown that the contested mark was perceived by the relevant public as a trade mark and not as the name of a product.
67      In the second place, as regards the Nielsen study submitted by the applicant before the Board of Appeal, the Board of Appeal found, in paragraphs 89 to 92 of the contested decision, that the sales data from the German market relating to the marinated fish segment for the years 2020 to 2022 showed that the applicant had a certain reputation on that market as regards that segment. However, it pointed out that the mark that was mentioned in all the statistics and analyses in that study was the mark KAPITAN NAVI and not the contested mark. It took the view that, consequently, the volume of sales indicated in that report did not distinguish between all those different products sold under the mark KAPITAN NAVI. The Board of Appeal added that the contested mark appeared next to other denominations, such as ‘Heringsröllchen nach Danziger Art in Pflanzenöl’ (Danzig-style herring rolls in vegetable oil) or ‘Heringsfilet nach Hausfrauen Art in Pflanzenöl’ (home-made herring fillet in vegetable oil), which have the same or a very similar structure to that of the contested mark and give the impression that the contested mark is the name of a specific product sold under the ‘house mark’ KAPITAN NAVI rather than a trade mark in its own right.
68      In order to challenge the Board of Appeal’s findings, the applicant submits that the Nielsen study clearly distinguishes between the values of the products sold under the mark Matjesfilethappen nach ‘Kolberger Art’ and that the Board of Appeal wrongly assumes that those goods are sold under the mark KAPITAN NAVI, the word elements ‘kapitan navi’ being, in that study, the name of the manufacturer and not a trade mark.
69      As the Board of Appeal pointed out, in that study, the expression ‘Matjesfilethappen nach “Kolberger Art”’ is preceded by the word elements ‘kapitan navi’, with the result that that study also does not show that the contested mark was perceived as a mark, especially since, in the table indicating the values and volumes of sales, the expression ‘Matjesfilethappen nach “Kolberger Art”’ appears above or below other denominations, also preceded by the word elements ‘kapitan navi’, which appear to describe goods. Furthermore, it is not apparent from that study that those word elements refer to the name of the manufacturer and not to a trade mark. Consequently, the Board of Appeal was right to find that the contested mark also appeared to be, in that study, the description of a product sold under the mark KAPITAN NAVI rather than a trade mark.
70      The other evidence submitted by the applicant during the administrative procedure referred to in paragraph 60 above does not call that conclusion into question.
71      The word elements ‘kapitan navi’ or a photo of the product in question featuring the figurative mark depicting the head of a captain and the word elements ‘kapitan navi’ also appear on the VAT invoice and on the printouts of consumer opinions.
72      In addition, on the overview of sales of the goods at issue from 2010 to 2020 presented in tables, the contested mark is followed by an indication of quantity and appears in the column entitled ‘product’. Moreover, it should be borne in mind that sales figures constitute only secondary evidence which may support, where appropriate, direct evidence of distinctive character acquired through use, such as provided by statements from professional associations or market studies (see, to that effect, judgments of 29 January 2013, Germans Boada v OHIM (Manual tile-cutting machine), T‑25/11, not published, EU:T:2013:40, paragraph 74, and of 24 February 2016, Coca-Cola v OHIM (Shape of a contour bottle without fluting), T‑411/14, EU:T:2016:94, paragraph 83). The applicant has not adduced such direct evidence.
73      It follows that it is not apparent from the evidence submitted by the applicant that the contested mark was perceived by the relevant public as a trade mark.
74      The Board of Appeal therefore correctly concluded that the evidence did not support the applicant’s claim that the contested mark had acquired distinctive character in consequence of the use which has been made of it on the German market under Article 7(3) of Regulation 2017/1001.
75      The third plea in law must therefore be rejected and, consequently, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility, disputed by EUIPO, of the applicant’s head of claim requesting the Court to refer the case back to EUIPO for reconsideration.
Costs
76      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.
77      Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener before the Court, as applied for by the intervener. Since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, as a hearing has not been organised, be ordered to bear its own costs.
78      The intervener also contended that the applicant should be ordered to pay the costs relating to the proceedings before EUIPO. In that regard, first, it should be noted that, under Article 190(2) of the Rules of Procedure, only the essential costs incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. It follows that the costs incurred for the purposes of the proceedings before the Cancellation Division cannot be regarded as recoverable costs. Therefore, the intervener’s form of order must be rejected in so far as it seeks to have the applicant bear the costs incurred before the Cancellation Division. Secondly, in so far as the intervener’s request concerns the costs of the proceedings before the Board of Appeal, it is sufficient to note that, since the present judgment dismisses the action brought against the contested decision, the operative part of that decision continues to govern the costs at issue (see, to that effect, judgment of 5 June 2024, Enterprise Holdings v EUIPO – Qommute (COMMUTE WITH ENTERPRISE), T‑500/23, not published, EU:T:2024:351, paragraph 88 and the case-law cited).
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Kapitan Navi Elżbieta Stramek i Waldemar Karpiński sp.j., in addition to bearing its own costs, to pay those incurred by Homann Feinkost GmbH for the purposes of the proceedings before the Court;
3.      Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Kowalik-Bańczyk
Hesse
Dimitrakopoulos
Delivered in open court in Luxembourg on 5 March 2025.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.