ORDER OF THE GENERAL COURT (Seventh Chamber)
26 September 2019 (*)
(EU trade mark — Invalidity proceedings — EU figurative mark Soba JAPANESE FRIED NOODLES — Absolute ground for invalidity — Article 59(1)(a) of Regulation (EU) 2017/1001 — No distinctive character — Article 7(1)(b) of Regulation 2017/1001 — Action manifestly lacking any foundation in law)
In Case T‑663/18,
Nissin Foods Holdings Co. Ltd, established in Osaka (Japan), represented by S. Malynicz QC, G. Messenger, Barrister, K. Gilbert and G. Lodge, Solicitors,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by G. Sakalaitė-Orlovskienė and J. Crespo Carrillo, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
The GB Foods, SA, established in L’Hospitalet de Llobregat (Spain), represented by E. Torner Lasalle, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 29 August 2018 (Case R 111/2018-4), relating to invalidity proceedings between The GB Foods and Nissin Foods Holdings,
THE GENERAL COURT (Seventh Chamber),
composed of V. Tomljenović (Rapporteur), President, A. Marcoulli and A. Kornezov, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 9 November 2018,
having regard to the response of EUIPO lodged at the Court Registry on 25 January 2019,
having regard to the response of the intervener lodged at the Court Registry on 23 January 2019,
makes the following
Order
Background to the dispute
1        On 28 February 2011, the applicant, Nissin Foods Holdings Co. Ltd, obtained, from the European Union Intellectual Property Office (EUIPO), registration, under number 9377904, of the EU figurative mark reproduced below, pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trademark (OJ 2009 L 78, p. 1), as amended (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)):
2        The goods in respect of which the mark was registered are in Class 30 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: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice; aromatic preparations for food; condiments; seasonings; essences for foodstuffs [except etheric essences and essential oils]; farinaceous foods; noodles; pasta; instant noodles; deep frozen noodles; chilled noodles; dried noodles; and prepared meals containing [principally] noodles’.
3        On 8 September 2015, the intervener, The GB Foods, SA, filed an application for a declaration of invalidity of the contested mark in respect of the goods referred to in paragraph 2 above, on the basis of Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001), in conjunction with Article 7(1)(b), (d) and (g) of Regulation No 207/2009 (now Article 7(1)(b), (d) and (g) of Regulation 2017/1001).
4        By decision of 30 November 2017, the Cancellation Division partially upheld the application for a declaration of invalidity, namely in respect of ‘noodles; pasta; instant noodles; deep frozen noodles; chilled noodles; dried noodles; and prepared meals containing [principally] noodles’ (‘the goods at issue’), on the ground that the contested mark is devoid of any distinctive character in respect of those goods, within the meaning of Article 7(1)(b) of Regulation 2017/1001.
5        The applicant filed a notice of appeal with EUIPO, under Articles 66 to 71 of Regulation 2017/1001, against the Cancellation Division’s decision in so far as it upheld the application for a declaration of invalidity.
6        By decision of 29 August 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, the Board of Appeal held, first, that the word elements ‘soba Japanese fried noodles’ of the contested mark would be perceived by the relevant public, namely the English-speaking general public, as descriptive of the goods at issue. Consequently, those word elements are devoid of any distinctive character. Secondly, the Board of Appeal found that the figurative elements of the contested mark, namely the colours, font and black rectangular shape, were commonplace and not distinctive. Similarly, the Asian characters are not sufficient to create the required minimum level of distinctiveness of the contested mark. The Board of Appeal therefore concluded that the contested mark did not contain any element that consumers would remember as an indication of the commercial origin of the goods at issue and that, consequently, the mark lacked distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
Forms of order sought
7        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
8        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
9        The intervener contends that the Court should:
–        dismiss the action and uphold the contested decision and the invalidity of the contested mark;
–        order the applicant to bear its own costs in accordance with Article 134 of the Rules of Procedure of the General Court.
Law
10      Under Article 126 of the Rules of Procedure, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
11      In the present case, the Court, taking the view that it has sufficient information from the documents before it, has decided, pursuant to Article 126 of the Rules of Procedure, to give a decision without taking further steps in the proceedings, even though one of the parties, in this case the applicant, has requested a hearing (see, to that effect, judgment of 6 June 2018, Apcoa Parking Holdings v EUIPO, C‑32/17 P, not published, EU:C:2018:396, paragraph 22, and order of 17 June 2016, Hako v EUIPO (SCRUBMASTER), T‑629/15, not published, EU:T:2016:384, paragraph 10 and the case-law cited).
The intervener’s first head of claim
12      By its first head of claim, the intervener asks the Court to dismiss the action and uphold the contested decision and the invalidity of the contested mark.
13      Given that ‘upholding’ the contested decision is tantamount to dismissing the action and that, since, by dismissing the action, the present judgment would be upholding the contested decision, which upheld the Cancellation Division’s decision declaring the partial invalidity of the contested mark, the intervener’s first head of claim must be regarded as seeking, in essence, the dismissal of the action (see, to that effect, judgment of 13 July 2018, Star Television Productions v EUIPO — Marc Dorcel (STAR), T‑797/17, not published, EU:T:2018:469, paragraph 75 and the case-law cited).
Substance
14      In support of its action, the applicant raises, in essence, a single plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001 in that the Board of Appeal erred in finding that the contested mark lacks distinctive character.
15      EUIPO and the intervener dispute the applicant’s arguments.
16      It should be recalled that, under Article 59(l)(a) of Regulation 2017/1001, an EU trade mark is to be declared invalid, on application to EUIPO, where the mark has been registered contrary to the provisions of Article 7 of that regulation.
17      Under Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of distinctive character are not to be registered. Article 7(2) of that regulation states that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
18      According to settled case-law, a mark is distinctive, within the meaning of Article 7(1)(b) of Regulation 2017/1001, where it serves to identify the product or service in respect of which registration was applied for as originating from a particular undertaking, and thus to distinguish that product or service from those of other undertakings (see judgment of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 23 and the case-law cited).
19      The distinctiveness of a mark must be assessed, first, by reference to the goods or services in respect of which registration of the mark is sought and, second, by reference to the perception of the relevant public, which consists of the average consumer of those goods or services (see judgment of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 24 and the case-law cited).
20      Any distinctive character of a compound mark may be assessed, in part, in respect of each of the terms or elements, taken separately, but that assessment must, in any event, be based on the overall perception of that trade mark by the relevant public and not on the presumption that elements individually devoid of distinctive character cannot, on being combined, present such character. The mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present such character (judgment of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 29).
21      However, a compound mark is devoid of distinctive character in respect of the goods and services concerned where there is no concrete evidence, such as the way in which the elements are combined, to indicate that the compound mark, taken as a whole, is greater than the sum of its parts (see, to that effect, judgment of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraphs 34 and 37).
22      The single plea in law raised by the applicant must be examined in the light of the principles referred to in paragraphs 18 to 21 above.
23      In the first place, it is clear from paragraphs 20 and 21 of the contested decision that the Board of Appeal assessed the distinctive character of the contested mark by reference to the goods in Class 30, which are foodstuffs, and therefore general consumer goods, and by reference to the perception of those goods by the relevant public, namely the English-speaking general public in the European Union. The applicant does not challenge that definition of the relevant public given by the Board of Appeal.
24      In the second place, the Board of Appeal stated, in essence, in paragraph 22 of the contested decision, that the contested mark consists of the Japanese word ‘soba’, written in bold, white characters, with a red circle in the centre of the letter ‘o’. It is also noted that the contested mark includes the expression ‘Japanese fried noodles’ written in much smaller red characters and placed below the word ‘soba’ and five Asian characters in grey positioned above the letters ‘ba’ of the word ‘soba’, also smaller than the characters of the term ‘soba’, all placed in a black rectangular shape.
25      In the third place, the Board of Appeal analysed the meaning of the element ‘soba’. In that regard, in paragraph 23 of the contested decision, it referred to the Oxford English Dictionary, which defines the term ‘soba’ as a ‘type of noodle that is made from buckwheat and is a popular Japanese food’. It noted that the first entry of that term in the dictionary was made in 1986, which is 24 years before the filing date of the contested mark. In addition, in paragraph 25 of the contested decision, the Board of Appeal found that the evidence produced by the intervener proves the common use of the term ‘soba’ to describe a type of Japanese noodle made from buckwheat. From that the Board of Appeal concluded, in paragraph 26 of the contested decision, that the element ‘soba’ of the contested mark is a descriptive indication for Japanese noodles made from buckwheat, at least for the English-speaking public within the European Union. That descriptive meaning already existed at the time of the application for registration of the contested mark. Finally, the addition of the descriptive expression ‘Japanese fried noodles’ confirms the meaning of the term ‘soba’.
26      In the fourth place, the Board of Appeal held, in essence, in paragraphs 27 and 28 of the contested decision, that since, first, the word elements of the contested mark are devoid of any distinctive character in that they are directly descriptive of ‘noodles’ but are also descriptive of the broader category to which those goods belong, namely ‘pasta’, second, the figurative elements of the contested mark, namely the colours, the font and the black rectangular shape are commonplace and in themselves not distinctive, and, third, the Asian characters, illegible for the English-speaking public in the European Union, suggest the Asian origin of the goods concerned and are not sufficient to create the required minimum level of distinctiveness of the contested mark, that mark does not contain any element that consumers would remember as an indication of the commercial origin of the goods at issue.
27      In the light of the considerations set out in the contested decision, the Board of Appeal carried out a proper analysis as to whether the contested mark is such as to distinguish the goods at issue from those of other undertakings.
28      Following that examination, the Board of Appeal was therefore entitled to conclude that the contested mark is devoid of distinctive character, within the meaning of Article 7(1)(b) of Regulation 2017/1001.
29      That conclusion cannot be called into question by the complaints raised by the applicant.
30      As regards the first complaint raised by the applicant alleging that the Board of Appeal failed to take into consideration the average consumer of the relevant public, the applicant submits that, although the term ‘soba’ may be found in the Oxford English Dictionary, that does not necessarily mean that the relevant public is aware of its definition. On the contrary, the term ‘soba’ is only likely to be understood by part of the relevant public, namely by experts such as chefs or consumers with a particular interest in Japanese cuisine.
31      It should be noted that, by its complaint, the applicant does not challenge the Board of Appeal’s definition of the term ‘soba’, as taken from the Oxford English Dictionary, but rather the relevant public’s knowledge of that term.
32      It is true that the mere inclusion of a term in one or more dictionaries cannot suffice to show that it is a commonly used term, the meaning of which will immediately be perceived by the general public, even in the case of native speakers of the language concerned. A dictionary not only contains well-known and regularly used terms, but also terms that are rare, poetic, outdated or that relate to highly specialised fields, the meaning of which is known only to a small number of specialists in the relevant sectors. It is more likely, consequently, in the case of such terms, that the relevant public, faced with a sign containing them, will not immediately perceive their meaning or, as the case may be, their connection with the goods or services covered (judgment of 21 June 2017, Rare Hospitality International v EUIPO (LONGHORN STEAKHOUSE), T‑856/16, not published, EU:T:2017:412, paragraph 38).
33      However, the Board of Appeal not only took into account the fact that the term ‘soba’ appears in the Oxford English Dictionary to arrive at the conclusion that the meaning of that term is known by the relevant public, it also took into consideration the evidence adduced by the intervener, namely, inter alia, the copy of an article published in The Guardian newspaper in which a Japanese chef based in London (United Kingdom) gives a recipe using soba, the printout of a page from food blog ‘Priya’s’ with a recipe based on soba, the copy of an article published on the ‘Living to eat!’ website describing soba as any type of noodle of medium thickness and containing various recipes, the printout of a page from an article published in English by a Swedish blogger referring to soba as a type of Japanese noodle and, finally, the printout of a page from the ‘Just Hungry’ blog featuring soba recipes.
34      In that regard, the applicant’s argument that the Board of Appeal assessed the evidence objectively and not from the point of view of the average consumer must be rejected. When it examined the evidence adduced by the intervener, the Board of Appeal specifically verified whether it demonstrated that the average consumer perceived the term ‘soba’ as referring to a type of Japanese noodle made from buckwheat. The fact that the term ‘soba’ is found on cookery blogs which are intended to be consulted by the general public to enable it to discover various ways of cooking these Japanese noodles, but also in an article in The Guardian newspaper, which is widely distributed in the United Kingdom and also addressed to the general public, was rightly found by the Board of Appeal to indicate that the relevant public is aware of the meaning of that term.
35      Thus, contrary to what the applicant asserts, the term ‘soba’ is not a term known only to experts, such as chefs. The present case must therefore also be distinguished from that giving rise to the judgment of 12 March 2008, Compagnie générale de diététique v OHIM (GARUM) (T‑341/06, not published, EU:T:2008:70), relied on by the applicant, since, in that judgment, the issue decided was whether the general public is likely to be aware of the term ‘garum’, which does not appear in contemporary language dictionaries, including those comprising terms of Latin origin. It must also be noted that the applicant’s assertion that the term ‘soba’ is known only to a specialist public is not substantiated by any factual evidence.
36      As regards the second complaint raised by the applicant alleging that the Board of Appeal did not examine the distinctive character of the contested mark by reference to the relevant goods, the applicant maintains, in essence, that the word elements ‘soba Japanese fried noodles’ are not descriptive of the goods at issue. Those word elements could be understood as referring to Japanese buckwheat noodles that have been fried. The relevant public is more likely to encounter the expression ‘soba Japanese fried noodles’ in relation to the provision of a service, such as in a restaurant specialising in fried noodles, than in relation to the trading of such goods.
37      Thus, according to the applicant, even if the word elements ‘soba Japanese fried noodles’ may allude to a possible method of preparing noodles, that is not sufficient to make them descriptive of the goods at issue.
38      In that regard, it must be recalled that a word element is descriptive and devoid of any distinctive character if at least one of its possible meanings designates a characteristic of the goods or services concerned. That is the case if the link established between the content of the word, on the one hand, and the goods or services in question, on the other, is sufficiently specific and direct to prove that the word enables the goods or services to be immediately identified in the minds of the relevant public (see judgment of 15 December 2016, Intesa Sanpaolo v EUIPO (START UP INITIATIVE), T‑529/15, EU:T:2016:747, paragraph 62 and the case-law cited).
39      In the present case, the goods at issue are ‘noodles; pasta; instant noodles; deep frozen noodles; chilled noodles; dried noodles; and prepared meals containing [principally] noodles’. Since the Board of Appeal correctly found that the term ‘soba’ is understood by the relevant public as referring to Japanese noodles made from buckwheat, that term is directly descriptive of the goods at issue. That finding applies to all of the goods at issue containing noodles as well as to ‘pasta’ since, as the Board of Appeal correctly found, noodles fall within the more general category of ‘pasta products’. As regards the expression ‘Japanese fried noodles’, it not only confirms the meaning of the term ‘soba’, but is also, in and of itself, descriptive of the goods at issue.
40      The applicant pleads, for the first time before the Court, the fact that the word elements of the contested mark are not descriptive of the goods at issue because they allude to a method of cooking. However, even if that argument were admissible, the issue whether or not the goods at issue consist of fried noodles cannot affect the conclusion reached in paragraph 39 above. Either the noodles included in the goods at issue are fried before being packaged, in which case the word elements are directly descriptive of the nature of the goods, or the noodles could be fried by the consumer after purchase, in which case the word elements are descriptive of how the goods could be cooked by the consumer.
41      Thus, contrary to what the applicant maintains, the word elements do not, in the mind of the relevant public, allude to or suggest certain characteristics of the goods at issue, but rather are directly descriptive of them, since they refer to soba noodles, that is to say, a type of Japanese noodles made from buckwheat which will either be fried or could be fried.
42      Since the word elements are descriptive, it cannot be maintained, as the applicant does, that they have the minimum degree of distinctive character required by the case-law (see, to that effect, judgment of 25 September 2015, BSH v OHIM (PerfectRoast), T‑591/14, not published, EU:T:2015:700, paragraph 40 and the case-law cited) to preclude the application of Article 7(1)(b) of Regulation 2017/1001. It is settled case-law that a descriptive word element in relation to certain goods or services is necessarily devoid of distinctive character as regards those goods or services (see, to that effect, judgment of 14 January 2016, International Gaming Projects v OHIM (BIG BINGO), T‑663/14, not published, EU:T:2016:5, paragraph 20 and the case-law cited).
43      Consequently, the Board of Appeal was correct to find that the word elements of the contested mark are devoid of distinctive character.
44      By its third and fourth complaints, which it is appropriate to examine together, alleging that the Board of Appeal did not properly analyse the overall impression of the contested mark and did not properly assess its distinctive character, the applicant maintains that the Board of Appeal erred in two ways when it found that the contested mark does not contain any element that consumers could recall as an indication of the commercial origin of the goods at issue. First, it failed properly to examine the figurative elements of the contested mark and, second, it failed to take into account the overall impression created by the various elements of the contested mark. In particular, the Board of Appeal attributed too much importance to the descriptive nature of the word elements of the contested mark and failed to take sufficient account of the overall impression left by the mark.
45      It must be recalled that a graphic style, even if it has some specific feature, may be regarded as a distinctive figurative element only if it is capable of conveying an immediate and lasting impression which members of the relevant public may retain in a way that makes it possible for them to distinguish the goods of the proprietor of the figurative mark from those of the other providers on the market. That is not the case, inter alia, where the graphic style used is a largely common one in the eyes of the relevant public or where the figurative element is only there to highlight the information conveyed by the word elements (see, to that effect, judgment of 27 October 2016, Caffè Nero Group v EUIPO (CAFFÈ NERO), T‑37/16, not published, EU:T:2016:634, paragraph 42 and the case-law cited).
46      In the present case, as regards the element ‘soba’, the stylisation of that element is not capable of making an immediate and lasting impression on the relevant public to the point of giving it a distinctive character. On the contrary, the brushstroke-like line and the presence of the red dot are likely to be perceived by the relevant public as referring to the Japanese origin of the goods, thus reinforcing the information conveyed by the element ‘soba’. The same applies to the Asian characters, which, in addition, are smaller than those of the element ‘soba’ and written in a grey colour that is less visible against the black background of the sign. Finally, the black rectangle in which all the word and figurative elements of the contested mark are placed constitutes an ordinary frame which does not give the contested mark a distinctive character.
47      Moreover, the fact that it was possible for the Asian characters to be the subject of a separate registration as an EU mark, of which the applicant is the proprietor, is not capable of giving the contested mark a distinctive character in the present case. In combination with the other elements of the contested mark, the Asian characters will be perceived as decorative elements. Such elements are common for food products of Asian origin, so that they will only highlight the information conveyed by the word elements.
48      In addition, it is necessary to reject the applicant’s argument that the Asian characters are sufficient to give the contested mark a distinctive character, since noodles belong to the broader category of pasta, which the average consumer does not perceive as a product of Asian origin. Including noodles in the broader category of pasta does not preclude them from being of Asian origin. The applicant does not challenge the fact that noodles, as such, are products of Asian origin.
49      As for the expression ‘soba Japanese fried noodles’, it should be pointed out that, contrary to what the applicant asserts, that expression is not so unusual under English grammatical and syntactical rules as to give the contested mark a distinctive character. Moreover, because of the positioning of the word elements in the sign and their respective sizes, it is highly likely that the average consumer will break down the mark into, first, the element ‘soba’ and, second, the expression ‘Japanese fried noodles’. In that context, the expression ‘Japanese fried noodles’ is constructed in conformity with English grammatical and syntactical rules and, as noted in paragraph 39 above, confirms the meaning of the element ‘soba’.
50      Finally, contrary to what the applicant submits, in analysing the word and figurative elements of the contested mark, the Board of Appeal did not attribute too much importance to the descriptive nature of the word elements and did indeed take into account the overall impression of the contested mark. That is apparent from paragraph 28 of the contested decision in which the Board of Appeal examined whether the graphic style, the colours used and the Asian characters of the contested mark were capable of giving it a distinctive character, notwithstanding the descriptive character of its word elements.
51      For the same reasons, the applicant’s assertion that the average consumer would perceive the contested mark as an image and not as a word mark, so that, taken as a whole, the stylisation of the contested mark renders it distinctive, should be rejected.
52      Consequently, the Board of Appeal was correct to find that the contested mark is devoid of distinctive character, within the meaning of Article 7(1)(b) of Regulation No 2017/1001.
53      In view of all the above, the single plea in law and, consequently, the action in its entirety, must be dismissed as manifestly lacking any foundation in law.
Costs
54      Under Article 134(1) 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 bear its own costs, in accordance with the forms of order sought by EUIPO and the intervener, and to pay EUIPO’s costs, in accordance with the form of order sought by EUIPO. The intervener must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
Hereby orders:
1.      The action is dismissed as manifestly lacking any foundation in law.
2.      Nissin Foods Holdings Co. Ltd shall bear its own costs and pay the costs of the European Union Intellectual Property Office (EUIPO).
3.      The GB Foods, SA shall bear its own costs.
Luxembourg, 26 September 2019.
E. Coulon
V. Tomljenović
Registrar
President
*      Language of the case: English.