JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
14 December 2022 (*)
(EU trade mark – Invalidity proceedings – EU word mark DEVIN – Absolute grounds for refusal – Descriptive character – Geographical name – Not contrary to public policy – Mark not of such a nature as to mislead the public – Article 7(1)(c), (f) and (g) of Regulation (EC) No 207/2009 (now Article 7(1)(c), (f) and (g) of Regulation (EU) 2017/1001) – Distinctive character acquired through use – Article 7(3) and Article 52(2) of Regulation No 207/2009 (now Article 7(3) and Article 59(2) of Regulation 2017/1001) – Cross-claim)
In Case T‑526/20,
Devin EAD,
established in Devin (Bulgaria), represented by B. Van Asbroeck, G. de Villegas and C. Haine, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Haskovo Chamber of Commerce and Industry, established in Haskovo (Bulgaria), represented by D. Dimitrova and I. Pakidanska, lawyers,
THE GENERAL COURT (Ninth Chamber),
composed, at the time of the deliberations, of M.J. Costeira, President, T. Perišin (Rapporteur) and P. Zilgalvis, Judges,
Registrar: E. Coulon,
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 based on Article 263 TFEU, the applicant, Devin EAD, seeks annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 28 May 2020 (Case R 2535/2019-1) (‘the contested decision’).
I.      Background to the dispute
2        On 11 July 2014, the intervener, the Haskovo Chamber of Commerce and Industry (Bulgaria) (‘the HCCI’), filed an application with EUIPO for a declaration of invalidity of the EU trade mark registered on 21 January 2011, further to an application filed on 29 September 2010 for the word sign DEVIN.
3        The contested mark covers goods 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 corresponding to the following description: ‘Non-alcoholic drinks; mineral water; seltzer waters; fruit-flavoured beverages; juices; syrups and other preparations for making beverages; aperitifs, non-alcoholic; spring water; flavoured water; non-alcoholic fruit extracts; non-alcoholic fruit juice beverages; table water; waters (beverages); seltzer mineral water; vegetable juices (beverages); isotonic drinks; cocktails, non-alcoholic; fruit nectars, non-alcoholic; soda water’.
4        The grounds relied on in support of the application for a declaration of invalidity, which concerns all of the goods referred to in paragraph 3 above, were those set out in Article 52(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (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)) (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(c), (f) and (g) of that regulation (now Article 7(1)(c), (f) and (g) of Regulation 2017/1001).
5        On 29 January 2016, the Cancellation Division upheld the application for a declaration of invalidity on the basis of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) of that regulation.
6        On 24 March 2016, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
7        By decision of 2 December 2016, the Second Board of Appeal of EUIPO dismissed the applicant’s appeal.
8        By application lodged at the Registry of the General Court on 22 February 2017, the applicant brought an action for annulment of the decision of the Second Board of Appeal, which was registered as Case T‑122/17.
9        By judgment of 25 October 2018, Devin v EUIPO – Haskovo (DEVIN) (T‑122/17, EU:T:2018:719; ‘the annulment judgment’), the Court annulled the decision of the Second Board of Appeal. The Court held, in essence, that the Board of Appeal had made an error of assessment in finding that the contested mark was known by the average consumer in Greece and in Romania and in the Member States of the European Union other than Bulgaria as the designation of a geographical origin and had thereby infringed Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) of that regulation.
10      By application lodged at the Registry of the Court of Justice on 19 December 2018, the intervener brought an appeal against the annulment judgment of the General Court.
11      By order of 11 July 2019, Haskovo v EUIPO (C‑800/18 P, not published, EU:C:2019:606), the Court of Justice dismissed the appeal as being, in part, manifestly inadmissible and, in part, manifestly unfounded.
12      On 11 November 2019, the Presidium of the Boards of Appeal referred the case to the First Board of Appeal.
13      By the contested decision, the Board of Appeal annulled in part the decision of the Cancellation Division as regards the product ‘mineral water complying with the specifications of the [protected geographical indication “Devin Natural Mineral Water” (“the PGI”)]’ in Class 32 and dismissed the appeal as to the remainder.
14      In the first place, the Board of Appeal examined the absolute ground for invalidity based on Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(c) of that regulation. First, it noted that the goods covered by the contested mark targeted the general public of the European Union, whose level of attention varied from low to average. It added that the geographical name Devin was known only to the average Bulgarian consumer and ‘at most’ to a negligible part of average consumers in Greece and in Romania. Secondly, it found that that mark should not have been used for goods other than ‘mineral water complying with the specifications of [the PGI]’ and that that mark had acquired distinctive character through use, within the meaning of Article 59(2) of Regulation 2017/1001, in the territory in which it was descriptive, namely Bulgaria, for the product ‘mineral water complying with the specifications of [the PGI]’.
15      In the second place, the Board of Appeal analysed the absolute ground for invalidity based on Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(f) of that regulation. It found, in essence, that the contested mark was ‘in conflict with [the PGI]’ for all the goods that [were] not limited to ‘mineral water complying with the specifications of [the PGI]’, with the result that its registration for those other goods also infringed provisions relating to public order ‘in conjunction with the corresponding provisions of the PGI’.
16      In the third place, the Board of Appeal assessed the absolute ground for invalidity under Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(g) of that regulation. It held that the contested mark deceived the relevant public as to the nature, quality and geographical origin of goods such as spring water or table water. It added that, to the extent that the trade mark had been registered ‘beyond the protection of the PGI’, it was deceptive as to the nature of all the goods except for ‘mineral water complying with the specifications of [the PGI]’.
II.    Forms of order sought
A.      The forms of order submitted in support of the main action
17      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to bear its own costs and to pay the applicant’s costs.
18      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
19      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred by the intervener.
B.      The forms of order submitted in support of the cross-claim
20      The intervener contends, in essence, that the Court should:
–        annul the contested decision in so far as it found that the contested mark had acquired distinctive character through use in Bulgaria for the product ‘mineral water complying with the specifications of [the PGI]’;
–        order the applicant to pay the costs incurred by the intervener.
21      EUIPO contends that the Court should:
–        dismiss the cross-claim;
–        order the intervener to bear its own costs and to pay the costs incurred by EUIPO.
22      The applicant claims that the Court should:
–        dismiss the cross-claim;
–        order the intervener to pay the costs incurred by the applicant in respect of the cross-claim.
III. Law
23      Given the date on which the application for registration at issue was filed, namely 29 September 2010, which is determinative for the purposes of identifying the applicable substantive law, the facts of the present case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited). Consequently, as regards the substantive rules, the Court will apply the relevant substantive provisions of Regulation No 207/2009.
24      Regarding the procedural rules, in so far as, according to settled case-law, they are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001. Moreover, having regard to the fact that the appeal before the Board of Appeal was brought before 1 October 2017, namely on 24 March 2016, it follows from a combined reading of the transitional provisions laid down in Article 82(2)(j) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 of the European Parliament and of the Council on the European Union trade mark and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1) and in Article 81(2)(j) of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Council Regulation No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1), that the procedural provisions of Title V of Delegated Regulation 2018/625 do not apply in the present case, so that the provisions of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended by Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4), were applicable to the appeal proceedings before the Board of Appeal.
A.      The main action
1.      Subject matter of the action
25      By its first head of claim, the applicant seeks the annulment of the contested decision.
26      In that regard, it should be noted that, under Article 72(4) of Regulation 2017/1001, ‘the action shall be open to any party to proceedings before the Board of Appeal adversely affected by its decision’.
27      By point 1 of the operative part of the contested decision, the Board of Appeal upheld the applicant’s appeal in part, annulling the decision of the Cancellation Division in so far as it had declared the contested mark to be invalid for the product ‘mineral water complying with the specifications of [the PGI]’.
28      Therefore, it must be held that, by its action, the applicant is seeking the annulment of point 3 of the operative part of the contested decision, that is, in so far as the Board of Appeal dismissed the appeal against the decision of the Cancellation Division as to goods covered other than ‘mineral water complying with the specifications of [the PGI]’ (see, to that effect, judgments of 26 February 2015, 9Flats v OHIM – Tibesoca (9flats.com), T‑713/13, not published, EU:T:2015:114, paragraphs 16 to 19, and of 4 May 2018, Bernard Krone Holding v EUIPO (Mega Liner), T‑187/17, not published, EU:T:2018:254, paragraphs 15 to 18).
2.      Substance
29      In support of the main action, the applicant relies, in essence, on three pleas in law, alleging (i) infringement of Article 52(1)(a), read in conjunction with Article 7(1)(c) and Article 7(3), of Regulation No 207/2009, (ii) infringement of Article 52(1)(a), read in conjunction with Article 7(1)(f), of that regulation, and (iii) infringement of Article 52(1)(a), read in conjunction with Article 7(1)(g), of that regulation.
(a)    The first plea in law, alleging infringement of Article 52(1)(a), read in conjunction with Article 7(1)(c) and Article 7(3), of Regulation No 207/2009
30      The applicant’s first plea is in two parts. The first part concerns the failure to assess the descriptive character of the contested mark with regard to all the goods that it covers. The second part concerns the assessment of the distinctive character acquired through use of the contested mark with regard to goods covered other than ‘mineral water complying with the specifications of [the PGI]’.
(1)    The first part, alleging failure to assess the descriptive character of the contested mark with regard to all the goods that it covers
31      The applicant submits that the Board of Appeal made an incomplete assessment of the descriptive character of the contested mark. It claims that the Board of Appeal limited its assessment of the descriptive character to the relevant public’s understanding of the word ‘devin’, whereas such an assessment would also require consideration of the link between that word and each of the goods designated by that mark. The applicant submits that those goods do not constitute a sufficiently homogenous group to allow an overall assessment to be made, since a clear distinction can be made between (i) water-based drinks and (ii) other types of beverage. Accordingly, it considers that, by failing to establish the link between the mark at issue and those other types of beverage, the Board of Appeal erred in law.
32      EUIPO considers that the Board of Appeal merely gave due effect to the annulment judgment. It submits that, in the annulment judgment, the General Court held that ‘the contested trade mark was descriptive of a geographical origin’ in Bulgaria and implied that it was for the Board of Appeal to examine whether distinctive character had been acquired through use. Thus, it merely established the existence of an error in the decision of the Second Board of Appeal, since it declared that mark to be invalid with regard to the perception of the Greek and Romanian public and rejected the applicant’s arguments as to the descriptive character with regard to all the goods that it covers.
33      In any event, EUIPO states that the Board of Appeal noted that it was ‘common ground’ that the contested mark should not have been used for goods other than ‘mineral water complying with the specifications of [the PGI]’, which confirms the fact that a mark consisting of a geographical name protected as a geographical indication is descriptive of goods covered by the geographical indication, since broader categories of goods include those covered by the geographical indication as well as those which may contain goods covered by the geographical indication as ingredients. EUIPO claims that, given the procedure for registration and publication of a geographical indication, it must be assumed that it is known in its country of origin and perceived according to its essential function, which is to describe the quality of the goods and their geographical origin.
34      The intervener considers that the Court confirmed the Second Board of Appeal’s finding that the contested mark was descriptive of all the goods that it covers and that, in accordance with Article 72(6) of Regulation 2017/1001, that question could not be re-examined by the First Board of Appeal following its referral. The intervener claims that that approach also corresponds with the one adopted by the applicant in its appeal before the Board of Appeal. The applicant categorised the goods covered by the contested mark as ‘mineral water (and the linked goods in Class 32)’, ‘bottled water and beverages that contain natural or mineral water’ and ‘mineral water and derivative products’. Separately, the intervener submits that it is apparent from the documents before the Court that the town of Devin is also known for its bottling industry, which makes that mark descriptive with regard to goods other than water. It adds that, for agricultural products or drinks, geographical terms are usually meant to refer to the place of production. Consequently, even if the Board of Appeal had made an individual assessment, the result of the analysis would have been the same.
35      In accordance with Article 52(1)(a) of Regulation No 207/2009, a trade mark is to be declared invalid where that trade mark has been registered contrary to the provisions of Article 7 of that regulation. Under Article 7(1)(c) of that regulation, 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 the 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.
36      According to the case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim in the public interest, which requires that such signs or indications may be freely used by all (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31; of 27 February 2002, Ellos v OHIM (ELLOS), T‑219/00, EU:T:2002:44, paragraph 27; and of 7 July 2011, Cree v OHIM (TRUEWHITE), T‑208/10, not published, EU:T:2011:340, paragraph 12).
37      As regards, more particularly, signs or indications which may serve to designate the geographical origin of the categories of goods in relation to which registration of the mark is applied for, 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 concerned, and may also, in various ways, influence consumer tastes by, for instance, associating the goods with a place that may give rise to a favourable response (see, to that effect, judgments of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 26, and of 15 October 2003, Nordmilch v OHIM (OLDENBURGER), T‑295/01, EU:T:2003:267, paragraph 30).
38      On that basis, first, the registration of geographical names as trade marks solely where they designate specified geographical locations which are already famous, or are known for the category of goods or services concerned, and which are therefore associated with those goods or services in the mind of the relevant class of persons, is excluded as, secondly, is the registration of geographical names which are liable to be used by undertakings and must remain available to such undertakings as indications of the geographical origin of the category of goods or services concerned (see, to that effect, judgment of 15 October 2003, OLDENBURGER, T‑295/01, EU:T:2003:267, paragraph 31 and the case-law cited).
39      However, Article 7(1)(c) of Regulation No 207/2009 does not, in principle, preclude the registration of geographical names which are unknown to the relevant class of persons – or at least unknown as the designation of a geographical location – or of names in respect of which, because of the type of place they designate, such persons are unlikely to believe that the category of goods or services concerned originates there (see, to that effect, judgment of 15 October 2003, OLDENBURGER, T‑295/01, EU:T:2003:267, paragraph 33 and the case-law cited).
40      In the light of all the foregoing, 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 (judgment of 15 October 2003, OLDENBURGER, T‑295/01, EU:T:2003:267, paragraph 34).
41      In making that assessment, EUIPO is bound to establish, first, that the geographical name is known to the relevant class of persons as the designation of a place and, second, that the name in question must suggest a current association, in the eyes of the relevant class of persons, with the goods or services in question, or else it must be reasonable to assume that such a name may, in the view of those persons, designate the geographical origin of those goods or services (see, to that effect, judgment of 6 October 2017, Karelia v EUIPO (KARELIA), T‑878/16, not published, EU:T:2017:702, paragraph 19 and the case-law cited).
42      It is in the light of those considerations that it must be examined whether, as the applicant submits, in essence, the Board of Appeal failed to assess whether the contested mark had, in the eyes of the relevant public, an association with the goods covered other than ‘mineral water complying with the specifications of [the PGI]’.
43      In the present case, it must first of all be noted that the Board of Appeal found, in paragraph 36 of the contested decision, that the goods covered by the contested mark targeted the general public of the European Union, whose level of attention varied from low to average. It should next be noted that the Board of Appeal found, in paragraph 44 of that decision, that, in accordance with the annulment judgment and as was apparent from the evidence provided by the intervener in support of the application for a declaration of invalidity, the geographical name Devin was known only to the average Bulgarian consumer and ‘at most’ to a negligible part of average consumers in Greece and Romania. It should lastly be noted that the Board of Appeal then examined the distinctive character acquired through use of that mark and found, in paragraph 53 of that decision that, in the light of the evidence submitted by the applicant, ‘especially [of] the geographical extent of the descriptiveness [of] the registered PGI’, that mark had acquired distinctive character through use, within the meaning of Article 52(2) of Regulation No 207/2009 (now Article 59(2) of Regulation 2017/1001) in the territory in which it was descriptive, namely Bulgaria, for the product ‘mineral water complying with the specifications of [the PGI]’.
44      Accordingly, it must be noted, as the applicant has submitted, that although, following the annulment judgment, the Board of Appeal correctly found that the contested mark was, in essence, known as the designation of a geographical origin only by the Bulgarian public and by a negligible part of the Romanian and Greek public, it made reference only to the ‘descriptiveness [of] the registered PGI’. In so doing, the Board of Appeal failed to assess whether, in accordance with the case-law cited in paragraph 41 above, that mark had, in the eyes of the general public in Bulgaria, an association with the goods covered other than those for which the geographical indication had been registered or whether it was reasonable to assume that it might, in the eyes of that public, designate their geographical origin.
45      By failing to assess whether the contested mark had such an association with the goods covered other than ‘mineral water complying with the specifications of [the PGI]’, the Board of Appeal did not comply with the requirements established by the settled case-law cited in paragraph 41 above.
46      The arguments of EUIPO and of the intervener do not invalidate that finding.
47      As regards EUIPO’s argument that, by failing to assess the descriptive character of the contested mark with regard to the goods covered other than ‘mineral water complying with the specifications of [the PGI]’, the Board of Appeal merely gave due effect to the annulment judgment, it must be noted that the argument is based on a misreading of that judgment. It is apparent from the grounds set out in paragraphs 14 to 96 of that judgment that the Court annulled the decision of the Second Board of Appeal, by upholding the first part of the applicant’s first plea relating to the degree of recognition by the relevant public of the word ‘devin’ as a geographical name, and did not rule on the second part of that plea relating to the association between the contested mark and all the goods that it covers. That argument must therefore be rejected.
48      Nor can EUIPO’s argument be accepted, according to which the Board of Appeal stated that it was ‘common ground’ that the contested mark should not have been used for the goods covered other than ‘mineral water complying with the specifications of [the PGI]’, which confirms that a mark consisting of a geographical name protected as a geographical indication is descriptive of goods covered by the geographical indication, since the broader categories of goods include those goods as well as goods which may contain those goods as ingredients; nor can EUIPO’s argument be accepted, according to which, given the procedure for registration and for publication of a geographical indication, it must be assumed that it is known in its country of origin and perceived according to its essential function, which is to describe the quality of the goods and their geographical origin.
49      In that regard, it is sufficient to note that that argument is not one of the grounds on which the contested decision is based. The statement of reasons for a decision must appear in the body of the decision itself and may not be provided by means of subsequent explanations provided by EUIPO, save in exceptional circumstances which, in the absence of any urgency, are not present. It follows that the decision must, in principle, be sufficient in itself and that the reasoning on which it is based cannot be stated in written or oral explanations given subsequently, when the decision in question is already the subject of proceedings brought before the EU Courts (see judgment of 12 December 2017, Sony Computer Entertainment Europe v EUIPO – Vieta Audio (Vita), T‑35/16, not published, EU:T:2017:886, paragraph 57 and the case-law cited).
50      In the present case, as there is no urgency, the exceptional circumstances referred to in paragraph 49 above are not present and EUIPO’s explanations cannot be regarded as supplementing the reasoning of the contested decision, since those explanations constitute an entirely new statement of reasons. The latter must therefore be rejected.
51      As regards the intervener’s argument that the solution adopted by the Board of Appeal corresponds to that of the applicant in its action before the Board of Appeal, it is sufficient to note that, in its statement of grounds of appeal, the applicant referred to the link between the contested mark and the ‘goods concerned’. Thus, the fact that the applicant classified the goods covered by the contested mark as ‘mineral water (and the linked goods in Class 32)’, as ‘bottled water and beverages that contain natural or mineral water’ and as ‘mineral water and derivative products’ has no bearing on the Board’s obligation to analyse the link between the contested mark and those ‘goods concerned’. That argument cannot therefore succeed.
52      It is also necessary to reject the intervener’s arguments that, first, the town of Devin is also famous for its bottling industry, the relevant consumers being likely to perceive the contested mark as a geographical indication of the goods, and, second, that geographical terms are generally intended to designate the place of production, with the result that, even if the Board of Appeal had made an individual assessment, the result of the analysis would have been the same. Even assuming them to be well founded, those circumstances cannot relieve the Board of Appeal of its obligation to establish that the contested mark is, in the eyes of the relevant class of persons, associated with the goods concerned, or that it is reasonable to assume that it may, in the eyes of that public, designate the geographical origin of those goods, as required by the case-law cited in paragraph 41 above.
53      It must therefore be held that the contested decision is vitiated by an error of law in that the Board of Appeal did not examine the link between the geographical name Devin constituting the contested mark and the goods covered other than ‘mineral water complying with the specifications of [the PGI]’ for which it had been registered. In so doing, the Board of Appeal infringed Article 52(1)(a), read in conjunction with Article 7(1)(c), of Regulation No 207/2009.
54      Consequently, that part of the plea must be upheld.
(2)    The second part, relating to the distinctive character acquired through use of the contested mark for goods covered other than ‘mineral water complying with the specifications of [the PGI]’
55      The Court considers it appropriate to examine the third complaint first.
56      In support of the third complaint, the applicant submits that the Board of Appeal contradicted itself by stating, first, that the contested mark should not have been used for goods other than ‘mineral water complying with the specifications of [the PGI]’ and, second, that it also ‘interpret[ed] the invalidity request as not being based on Article 7(1)(j) [of Regulation 2017/1001] or the corresponding previous absolute ground for refusal of signs that may infringe provisions of Protected Geographical Indications’.
57      EUIPO, for its part, considers that the use of a trade mark that is liable to mislead the public as to the qualities of the goods that it covers cannot be regarded as a use for the purposes of acquiring distinctive character through use in respect of those goods. That finding stems from the wording of Article 52(2) of Regulation No 207/2009, under which only grounds relating to lack of distinctiveness, descriptiveness and customary character may be overcome by the recognition of distinctive character acquired through use. According to EUIPO, where a sign describes a geographical origin, the protection resulting from the acquisition of distinctive character must be limited to goods having that geographical origin, otherwise the mark may give rise to a risk of deceit with regard to goods with a different geographical origin.
58      EUIPO claims that the Board of Appeal applied that reasoning to the contested mark, which consists of a registered geographical indication for mineral water. According to EUIPO, given the essential function of a geographical indication, namely that of guaranteeing to consumers the geographical origin and inherent qualities of the goods, the Board of Appeal was fully entitled to consider that protection could be granted only to goods with Devin as a geographical origin and which complied with the specifications of the PGI. Granting broader protection to goods that do not comply with the specifications of the PGI would not safeguard the public interest protected by Article 7(1)(g) of Regulation No 207/2009.
59      The intervener, for its part, submits that the Board of Appeal correctly took the PGI into account in finding that the contested mark could not be used for goods other than ‘mineral water complying with the specifications of [the PGI]’. The intervener adds that, if the applicant has used that mark for goods other than the one for which the geographical indication had been registered, it cannot rely on rights in that regard, since it is unlawful use.
60      As a preliminary point, it is apparent from the applicant’s arguments that, by its complaint alleging a contradiction whereby the Board of Appeal vitiated the contested decision, the applicant appears, in fact, to criticise the Board of Appeal for having taken into account considerations relating to the grounds for invalidity based on the protection of geographical indications in the context of the assessment of the acquisition of distinctive character through use of the contested mark.
61      It is necessary therefore to examine whether the Board of Appeal could, without being in error, assess whether the contested mark had acquired distinctive character through use within the meaning of Article 52(2) of Regulation No 207/2009 solely for ‘mineral water complying with the specifications of [the PGI]’, on the ground that it ‘should not have been used’ for other goods.
62      In that regard, as is apparent from paragraph 4 above, the application lodged by the intervener for a declaration of invalidity was based on Article 52(1)(a), read in conjunction with Article 7(1)(c), (f) and (g), of Regulation No 207/2009.
63      It should also be borne in mind that, as is apparent from the examination of the first part of the present plea, the Board of Appeal erred in failing to assess the descriptive character of the contested mark in relation to all the goods covered by it other than ‘mineral water complying with the specifications of [the PGI]’.
64      Moreover, since, in its observations in response to the application for a declaration of invalidity, the applicant relied on distinctive character acquired through use of the contested mark under Article 7(3) of Regulation No 207/2009, any possible distinctiveness of that mark must be assessed in respect of all the goods for which it is descriptive.
65      However, contrary to the findings in paragraph 64 above, the Board of Appeal did not assess whether, as the applicant claimed, the contested mark had acquired distinctive character through use in respect of the goods that it covers, but merely considered that that mark ‘should not have been used’ for goods other than ‘mineral water complying with the specifications of [the PGI]’ and that, with regard to the evidence submitted by the applicant, ‘especially [of] the geographical extent of the descriptiveness [of] the registered PGI’, that mark had acquired distinctive character through use in Bulgaria, within the meaning of Article 52(2) of Regulation No 207/2009, solely for ‘mineral water complying with the specifications of [the PGI]’.
66      In so doing, the Board of Appeal took into account, in its assessment of the distinctive character acquired through use of the contested mark, considerations relating to the protection of geographical indications.
67      According to Article 7(1)(j) of Regulation 2017/1001, ‘trade marks which are excluded from registration, pursuant to [EU] legislation or national law or to international agreements to which the [European Union] or the Member State concerned is party, providing for protection of designations of origin and geographical indications’, shall not be registered.
68      As is apparent from paragraphs 69 and 70 of the contested decision, the Board of Appeal found, in essence, that the contested mark was in conflict with ‘[the PGI]’ for all products except ‘mineral water complying with the specifications of [the PGI]’ and that its registration infringed ‘the corresponding provisions of the PGI’.
69      That interpretation is confirmed by EUIPO’s arguments, set out in the response, that the expression ‘it is common ground that [the contested mark should not have been used for goods other than] mineral water complying with the specifications of [the PGI]’ must be read in the context of paragraph 34 of the contested decision, in which the Board of Appeal made reference to the PGI, and in the context of paragraphs 67 and 68 of that decision, according to which any use of the sign for any goods other than those covered by the geographical indication would be prohibited because it would deceive the relevant public.
70      However, in the context of invalidity proceedings, it is apparent from the provisions of Articles 52 and 55 of Regulation No 207/2009 (now Articles 59 and 62 of Regulation 2017/1001) that the EU trade mark is regarded as valid until it has been declared invalid by EUIPO following invalidity proceedings. It therefore enjoys a presumption of validity, which is the logical consequence of the check carried out by EUIPO in the examination of an application for registration (judgment of 13 September 2013, Fürstlich Castell’sches Domänenamt v OHIM – Castel Frères (CASTEL), T‑320/10, EU:T:2013:424, paragraph 27).
71      The presumption of validity of the EU trade mark limits EUIPO’s obligation, under Article 95(1) of Regulation 2017/1001, to examine of its own motion the relevant facts which may lead it to apply absolute grounds for refusal, is restricted to the examination of the application for an EU trade mark carried out by the EUIPO examiners and, on appeal, by the Boards of Appeal during the procedure for registration of that mark. In invalidity proceedings, as the registered EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call the validity of that trade mark into question (judgment of 13 September 2013, CASTEL, T‑320/10, EU:T:2013:424, paragraph 28).
72      In the present case, since the intervener did not rely on a ground for invalidity based on the protection of geographical indications, it was not for the Board of Appeal to examine of its own motion the relevant facts which could lead it to apply considerations based on such a ground.
73      Moreover, it should be noted that the Court held, in paragraph 29 of the annulment judgment, that the present dispute did not concern a possible ground for refusal (or ground for invalidity) based on the new Article 7(1)(j) of Regulation 2017/1001, or on Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs (OJ 2012 L 343, p. 1).
74      Although the Board of Appeal stated, in paragraph 18 of the contested decision, that it ‘also interpret[ed] the invalidity request as not being based on Article 7(1)(j) [of Regulation 2017/1001], or the corresponding previous absolute ground for refusal of signs that may infringe provisions of Protected Geographical Indications’, it did in fact base its reasoning on such considerations.
75      It must therefore be noted that, by taking into account the fact that the contested mark ‘should not have been used’ for goods other than ‘mineral water complying with the specifications of [the PGI]’ for the purpose of finding that that mark had acquired distinctive character through use within the meaning of Article 52(2) of Regulation No 207/2009, solely for that product, the Board of Appeal erred in law.
76      The arguments of EUIPO and the intervener cannot call that finding into question.
77      As regards EUIPO’s argument that the Board of Appeal applied reasoning in terms of which, in accordance with Article 52(2) of Regulation No 207/2009, the use of a trade mark that is liable to mislead the public as to the qualities of the goods it covers cannot be regarded as use of such a kind as would enable distinctive character to be acquired through use, with the result that, by finding that protection could be granted only to goods with Devin as geographical origin and complying with the specifications of the PGI, it has upheld the general interest protected by Article 7(1)(g) of Regulation No 207/2009, suffice it to state that that line of argument does not form part either of the reasoning developed in the context of the plea alleging infringement of Article 52(1)(a), read in conjunction with Article 7(1)(c) and Article 7(3), of Regulation No 207/2009, or of the reasoning in the context of the plea alleging infringement of Article 52(1)(a), read in conjunction with Article 7(1)(g) of that regulation. Therefore, for the reasons set out in paragraph 49 above, that line of argument must be rejected.
78      In any event, it should be noted that, as is apparent from paragraphs 52 and 53 of the contested decision, the Board of Appeal based its reasoning on the fact that the contested mark ‘should not have been used’ for goods other than ‘mineral water complying with the specifications of [the PGI]’, and, therefore, on the prohibition on using that geographical indication for goods other than those for which it had been registered resulting from its protection, and not on its alleged misleading nature, with the result that EUIPO cannot claim that the Board of Appeal, by applying the reasoning that it had developed in the defence, preserved the general interest protected by Article 7(1)(g) of Regulation No 207/2009.
79      As regards the intervener’s argument that, although the applicant used the contested mark for goods other than ‘mineral water complying with the specifications of [the PGI]’, the applicant cannot rely on rights in that regard, since it is unlawful use, it should be noted that, as is apparent from paragraphs 66 to 70 of the contested decision, the alleged unlawful use, if established, results from Bulgarian legislation that provides for the protection of geographical indications. However, it must be borne in mind that the EU trade mark regime is an autonomous system, with its own set of objectives and rules peculiar to it; it applies independently of any national system (see judgment of 12 December 2013, Rivella International v OHIM, C‑445/12 P, EU:C:2013:826, paragraph 48 and the case-law cited). Consequently, the registrability of a sign as an EU trade mark must be assessed by reference only to the relevant EU rules (judgment of 17 January 2019, Equity Cheque Capital Corporation v EUIPO (DIAMOND CARD), T‑91/18, not published, EU:T:2019:17, paragraph 48).
80      Accordingly, it is necessary to uphold the third complaint of the present part of the plea, and therefore the present plea in its entirety, without it being necessary to examine the other complaints raised by the applicant.
(b)    The second plea in law, alleging infringement of Article 52(1)(a), read in conjunction with Article 7(1)(f), of Regulation No 207/2009
81      In the context of the fourth part of the plea, which it is appropriate to examine first, the applicant considers, in essence, that the contested mark was not registered in breach of Article 7(1)(f) of Regulation No 207/2009.
82      EUIPO has not submitted any specific arguments in that regard.
83      The intervener claims that the applicant’s interpretation of the concept of ‘public policy’ is extremely restrictive. It submits that Article 7(1)(f) of Regulation No 207/2009 applies to any term, symbol or sign the use of which is prohibited by EU legislation or by national law in at least one Member State. It adds that the national legislation and practice of Member States may be taken into account in assessing the breach of public policy as factual evidence enabling the perception of certain categories of signs to be assessed. Consequently, the Board of Appeal was entitled to take into account the Bulgarian legislation relating to geographical indications and the decisions of Патентно ведомство на Република България (Patent Office of the Republic of Bulgaria) refusing to register marks consisting of the word ‘devin’ for goods other than Devin natural mineral water due to the evidential value as to the perception of the relevant public. Moreover, the intervener considers that, due to its inherent characteristics, the contested mark is perceived by the Bulgarian public as being the name of a source of mineral water, the PGI, the name of a town famous for its mineral water sources and its bottling industry, with the result that the monopolisation of the name Devin gives the impression of a misunderstanding of the legislation and promotes unfair practices.
84      Under Article 7(1)(f) of Regulation No 207/2009, trade marks which are contrary to public policy or to accepted principles of morality are not to be registered. According to paragraph 2 of that article, paragraph 1 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union. Such a part may comprise a single Member State (judgment of 12 December 2019, Conte v EUIPO (CANNABIS STORE AMSTERDAM), T‑683/18, EU:T:2019:855, paragraph 29).
85      The public interest underlying that absolute ground for refusal is to ensure that signs which, when used in the European Union, would be contrary to public policy or to accepted principles of morality are not registered (judgments of 20 September 2011, Couture Tech v OHIM (Representation of the Soviet coat of arms), T‑232/10, EU:T:2011:498, paragraph 29, and of 26 September 2014, Brainlab v OHIM (Curve), T‑266/13, not published, EU:T:2014:836, paragraph 13).
86      It is apparent from the case-law that assessment as to whether a sign is contrary to public policy or to accepted principles of morality must be carried out with reference to the perception of that sign, when being used as a trade mark, by the relevant public within the European Union or within a part of the European Union (judgments of 20 September 2011, Representation of the Soviet coat of arms, T‑232/10, EU:T:2011:498, paragraph 50; of 9 March 2012, Cortés del Valle López v OHIM (¡Que buenu ye! HIJOPUTA), T‑417/10, not published, EU:T:2012:120, paragraph 12; and of 14 November 2013, Efag Trade Mark Company v OHIM (FICKEN LIQUORS), T‑54/13, not published, EU:T:2013:593, paragraph 12).
87      The assessment as to the existence of a ground for refusal under Article 7(1)(f) of Regulation No 207/2009 cannot be based on the perception of the part of the relevant public that does not find anything shocking, nor can it be based on the perception of the part of the public that may be very easily offended, but must be based on the standard of a reasonable person with average sensitivity and tolerance thresholds (judgments of 5 October 2011, PAKI Logistics v OHIM (PAKI), T‑526/09, not published, EU:T:2011:564, paragraph 12, and of 14 November 2013, FICKEN LIQUORS, T‑54/13, not published, EU:T:2013:593, paragraph 21).
88      Furthermore, the relevant public cannot be limited to the public to which the goods and services covered by the contested mark are directly addressed. Consideration must be given to the fact that the signs caught by that ground for refusal will shock not only the public to which the goods and services designated by the sign are addressed, but also other persons who, without being concerned by those goods and services, will encounter that sign incidentally in their day-to-day lives (judgments of 5 October 2011, PAKI, T‑526/09, not published, EU:T:2011:564, paragraph 18, and of 14 November 2013, FICKEN LIQUORS, T‑54/13, not published, EU:T:2013:593, paragraph 22).
89      It is with regard to those considerations that it must be examined whether, as the applicant claims, the Board of Appeal infringed Article 52(1)(a), read in conjunction with Article 7(1)(f), of Regulation No 207/2009.
90      In the present case, it must be noted, in the first place, that the Board of Appeal did not explicitly define the relevant public to be taken into account in the examination of the ground for invalidity based on Article 52(1)(a), read in conjunction with Article 7(1)(f), of Regulation No 207/2009.
91      Nevertheless, it is sufficient to observe that, as is apparent from paragraph 88 above, in the context of assessing the ground for refusal set out in Article 7(1)(f) of Regulation No 207/2009, the relevant public cannot be limited to the public to which the goods covered by the mark are directly targeted, but account must also be taken of other persons who, without being concerned by those goods, will be confronted with that mark incidentally in their daily life.
92      As regards the relevant territory, the Board of Appeal noted, in paragraph 65 of the contested decision, that the intervener relied on national law in Bulgaria being undermined.
93      In the second place, it must be held that the Board of Appeal considered, in paragraphs 66 to 70 of the contested decision, that Article 12(1)(12) of ‘the Bulgarian TMGIA’ excluded from protection trade marks which consisted exclusively of registered geographical indications and of derivatives of geographical names. It added that the Bulgarian TMGIA also prohibited the registration of trade marks which include geographical indications or their derivatives for goods other than those for which geographical indications had been registered and did not allow their use to describe goods other than those for which those geographical indications had been registered. It stated that, in accordance with the Bulgarian TMGIA, the Patent Office of the Republic of Bulgaria had refused to register the word and figurative marks DEVIN for goods other than mineral water. It therefore considered that the contested mark would be ‘in conflict with [the PGI]’ for all goods that are not limited to ‘mineral water complying with the specifications of [the PGI]’. According to the Board of Appeal, the contested mark infringes the provisions relating to public policy ‘in conjunction with the corresponding provisions of the PGI’.
94      In response to the questions put by the Court by way of measures of organisation of procedure, seeking clarification concerning the national law taken into account by the Board of Appeal, EUIPO claimed that the provision to which the Board of Appeal meant to refer in paragraph 66 of the contested decision was Article 11(1)(12) of the Zakon za markite i gueografskite oznachenija
(Bulgarian law on trade marks and geographical indications)) and that that provision was not in force on the date on which the application for registration of the contested mark was filed, namely 29 September 2010.
95      In its written observations of 6 April 2022, the intervener stated that the relevant provision of the Bulgarian law on trade marks and geographical indications in force on the date on which the application for registration of the contested mark was filed was Article 12(1)(3), providing for prohibition of registration of a mark consisting of a registered geographical indication or of its derivatives, which was moved, following an amendment to that Bulgarian law, to Article 11(1)(12).
96      In that regard, it should be noted that the parties agree that the reference made by the Board of Appeal in the contested decision, namely Article 12(1)(12) of the Bulgarian law on trade marks and geographical indications is incorrect and that Article 11(1)(12) of that act, referred to by EUIPO in its response to the measures of organisation of procedure, was not in force on the date on which the application for registration of the contested mark was filed, namely 29 September 2010.
97      In that context, it cannot be held that, on the date on which the application for registration of the contested mark was filed, the Bulgarian law on trade marks and geographical indications excluded the protection of marks consisting exclusively of registered geographical indications and of derivatives of geographical names.
98      In so far as the intervener claims that the provision to be taken into account, in force on the filing date of the application for registration of the contested mark, is Article 12(1)(3) of the Bulgarian law on trade marks and geographical indications, it is sufficient to observe that the contested decision does not make reference to that article and it was not mentioned by EUIPO in its response to the measures of organisation of procedure.
99      In any event, it must be stated that, on the date on which the application for registration of the contested mark was filed, Article 12(1)(3) of the Bulgarian law on trade marks and geographical indications constituted a relative ground for refusal. At the time when the application for registration was filed, that article was headed ‘Relative grounds for refusal of registration’. In the present case, the application for a declaration of invalidity is based on absolute grounds for invalidity.
100    Moreover, EUIPO submitted, in its observations in response to the measures of organisation of procedure, that Article 90(2) of the Bulgarian law on trade marks and geographical indications, in force on the date on which the application for registration of the contested mark was filed, prohibited the use of geographical indications for goods other than those for which they had been registered.
101    In that regard, it must be noted that the contested decision does not refer to any provision of the Bulgarian law on trade marks and geographical indications prohibiting the use of geographical indications for goods other than those for which they had been registered. Although, in response to the Court’s measures of organisation of procedure, EUIPO made reference to Article 90(2) of that Bulgarian law, it should be noted that, as follows from paragraph 49 above, the statement of reasons for a decision must appear in the body of the decision itself and may not be provided by means of subsequent explanations provided by EUIPO, save in exceptional circumstances which, in the absence of any urgency, are not present.
102    In any event, it should be noted, as the applicant submits, that, on the date on which the application for registration of the contested mark was filed, the Bulgarian law on trade marks and geographical indications did not appear to contain an Article 90.
103    Consequently, without it being necessary to consider whether, in accordance with the case-law cited in paragraph 86 above, the relevant public in Bulgaria perceives the contested mark as being contrary to public policy, it is not apparent from the file that it has been demonstrated that, on the filing date of its application for registration, the contested mark was capable of infringing ‘the corresponding provisions of the PGI’.
104    Therefore, the present part of the plea and, accordingly, the present plea must be upheld, without it being necessary to examine the other parts raised by the applicant.
(c)    The third plea in law, alleging infringement of Article 52(1)(a), read in conjunction with Article 7(1)(g), of Regulation No 207/2009
105    The Board of Appeal found, in paragraphs 75 to 82 of the contested decision, that the contested mark deceived the relevant public as to the nature, quality and geographical origin of goods such as ‘spring water’ or ‘table water’. According to the Board of Appeal, that public is led to believe that those goods are mineral water with specific properties due to its geographical origin, whereas table water may be water in the distribution network, surface water or be obtained via drilling, or even via a desalinisation product, and spring water is from an underground source and is bottled on site. As regards the other goods covered by that mark, the Board of Appeal noted that the intervener had not submitted any argument. It concluded that, to the extent that that mark had been registered for goods that were not covered by the PGI, its protection was deceptive as to the nature of all the goods except ‘mineral water complying with the specifications of [the PGI]’.
106    The applicant submits, in essence, that the Board of Appeal erred in finding that the contested mark was deceptive for all the goods except ‘mineral water complying with the specifications of [the PGI]’. In particular, it claims that the Board of Appeal, whilst noting that no argument as to goods other than ‘spring water’ and ‘table water’ had been put forward by the intervener, declared of its own motion that the contested mark was invalid for all the goods that it covered except ‘mineral water complying with the specifications of [the PGI]’.
107    EUIPO has not submitted any specific arguments in that regard.
108    The intervener claims that, first, contrary to the applicant’s arguments, the Board of Appeal established that the contested mark was deceptive as to the nature of the goods and not their geographical origin. Secondly, it submits that it had presented arguments and evidence proving actual deceit of consumers as to the nature of all the goods covered by that mark and that the Board of Appeal also took into account well-known facts relating to the characteristics of spring water and mineral water. In addition, Article 8 of Directive 2009/54/EC of the European Parliament and of the Council of 18 June 2009 on the exploitation and marketing of natural mineral waters (OJ 2009 L 164, p. 45) lays down the rule that waters from one spring must be designated by a single name. Thirdly, the intervener submits that the applicant misinterprets Article 8(3) thereof, which should be read in the light of recital 5 and Article 9 of that directive. Furthermore, the prohibition on misleading use is consistent with the prohibition on the use of misleading commercial practices laid down in Article 6(1)(b) of Directive 2005/29/EC of the European Parliament and of the Council of 11 May 2005 concerning unfair business-to-consumer commercial practices in the internal market and amending Council Directive 84/450/EEC, Directives 97/7/EC, 98/27/EC and 2002/65/EC of the European Parliament and of the Council and Regulation (EC) No 2006/2004 of the European Parliament and of the Council (OJ 2005 L 149, p. 22). Fourthly, the intervener submits that, on the one hand, the Bulgarian public associates the word ‘devin’ with natural mineral water from the Devin source and therefore with the corresponding geographical indication, and, on the other hand, that mark is also deceptive for EU consumers in so far as the latter directive, which establishes the list of natural mineral waters recognised by each Member State, is published in the Official Journal of the European Union and is accessible to EU consumers.
109    Under Article 7(1)(g) of Regulation No 207/2009, trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service, are not to be registered.
110    It is apparent from settled case-law that the circumstances for refusing registration referred to in Article 7(1)(g) of Regulation No 207/2009 presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (see judgment of 29 November 2018, Khadi and Village Industries Commission v EUIPO – BNP Best Natural Products (Khadi Ayurveda), T‑683/17, not published, EU:T:2018:860, paragraph 44 and the case-law cited).
111    In that regard, it must be borne in mind that the essential function of a trade mark is to guarantee the identity of the origin of the marked goods or services to the consumer or end user by enabling him or her, without any possibility of confusion, to distinguish those goods or services from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality. A trade mark no longer fulfils that role of acting as a guarantee if the information that it contains deceives the public (see judgment of 29 November 2018, Khadi Ayurveda, T‑683/17, not published, EU:T:2018:860, paragraph 45 and the case-law cited).
112    Consequently, the assessment of the absolute ground for refusal set out in Article 7(1)(g) of Regulation No 207/2009 can be made only, first, in relation to the goods or services concerned and, second, in relation to the relevant public’s perception of the mark.
113    It is in the light of those considerations that it should be ascertained whether, as the applicant submits, the Board of Appeal infringed Article 52(1)(a), read in conjunction with Article 7(1)(g), of Regulation No 207/2009.
114    In the first place, it should be noted that the Board of Appeal did not explicitly define the relevant public to be taken into account in the context of examining the ground for invalidity based on Article 52(1)(a), read in conjunction with Article 7(1)(g), of Regulation No 207/2009.
115    Even if the relevant public taken into account by the Board of Appeal in the context of that ground for refusal were the same as that defined in the context of examining the ground for invalidity provided for in Article 52(1)(a), read in conjunction with Article 7(1)(c), of Regulation No 207/2009, it should be noted that the Board of Appeal found, in paragraphs 36 and 44 of the contested decision, that the goods covered by the contested mark targeted the general public of the European Union, whose level of attention varied from low to average, and that the geographical name ‘Devin’ was known only to the average Bulgarian consumer and ‘at most’ to a negligible part of average consumers in Greece and in Romania.
116    In the second place, as to the perception of the contested mark by the relevant public, it must be held, as the applicant submits, that, contrary to the Board of Appeal’s findings in paragraph 79 of the contested decision, it is not apparent from the file that the word ‘devin’ is perceived by the relevant Bulgarian public as a reference to mineral water with specific properties because of its geographical origin.
117    In the statement setting out the grounds of the application for a declaration of invalidity, the intervener claimed that the relevant public recognised and associated the contested mark with the mineral water of the same name located in the town of Devin and that it was, therefore, liable to deceive the relevant public as to table water or spring water being mineral water from the Devin source. In support of that argument, the intervener submitted a press article referring to alleged deceit as to the geographical origin of the spring water marketed under the DEVIN mark.
118    Such a declaration cannot serve as evidence suitable for establishing that the word ‘devin’ will be perceived by the relevant public as a reference to mineral water with specific properties because of its geographical origin. Moreover, neither the press article submitted by the intervener in that regard nor any other evidence in the file supports such a finding. The press article in question concerns alleged deceit as to the geographical origin of the spring water marketed under the DEVIN mark but is not capable of proving the perception of the relevant public. Furthermore, although the intervener submitted evidence of the inclusion of Devin water in the official list of natural mineral waters recognised by Bulgaria and the other Member States, published in the Official Journal of the European Union (OJ 2010 C 65, p. 1) in accordance with Article 1 of Directive 2009/54 and submitted evidence of the existence of the PGI, which is registered in Bulgaria, and of an identical appellation of origin within the meaning of the Lisbon Agreement, it is sufficient to note that, as is apparent from paragraph 60 of the annulment judgment, it cannot, in essence, be presumed that the average consumer has an extremely high degree of knowledge which it clearly does not possess, including international treaties and the list of protected geographical indications in its country.
119    In the third place, it should be noted that, whilst it is not apparent from the file that the relevant public associates the word ‘devin’ with mineral water that has specific properties because of its geographical origin, it cannot be held that there is actual deceit or a sufficiently serious risk of the consumer being deceived as to the nature of goods other than ‘mineral water complying with [the specifications of][the PGI]’. Article 7(1)(g) of Regulation No 207/2009 implies a sufficiently specific designation of potential characteristics of the goods or services covered by the trade mark. Only where the targeted consumer is made to believe that the goods possess certain characteristics which they do not in fact possess will he or she be deceived by the trade mark (judgment of 24 September 2008, HUP Uslugi Polska v OHIM – Manpower (I.T.@MANPOWER), T‑248/05, not published, EU:T:2008:396, paragraph 65). Thus, in the absence of any association of the word ‘devin’ with mineral water that has specific properties by virtue of its geographical origin, that public cannot harbour expectations in respect of the contested mark (see, by analogy, judgment of 29 November 2018, Khadi Ayurveda, T‑683/17, not published, EU:T:2018:860, paragraph 53).
120    In any event, it must be stated, as the applicant claims and as is apparent from paragraph 78 of the contested decision, that the intervener has not put forward any argument as to the misleading nature of the contested mark with regard to goods other than spring water and table water. As is apparent from paragraph 71 above, in the context of invalidity proceedings, since the registered EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts that call its validity into question. Therefore, the Board of Appeal could not declare of its own motion that the contested mark was invalid for goods other than ‘mineral water complying with the specifications of [the PGI]’ because of their deceptive nature.
121    It follows from the foregoing considerations that the Board of Appeal, in finding that the contested mark could mislead the relevant public as to the nature of goods other than ‘mineral water complying with the specifications of [the PGI]’, made an error of assessment.
122    The intervener’s arguments are not such as to call that finding into question.
123    First, the intervener’s argument that, during the administrative procedure, it pointed out that all the arguments relating to spring water and table water were also valid for similar goods in Class 32 which may contain mineral water, cannot be accepted. It is apparent from paragraph 83 of the contested decision that the Board of Appeal’s assessment that the contested mark is such as to deceive the relevant public as to the nature of goods other than ‘mineral water complying with the specifications of [the PGI]’ is based on the protection of the geographical indication and not on the arguments put forward by the applicant relating to spring water and table water. In any event, even if the intervener had also disputed the goods other than spring water and table water, that decision is vitiated by contradictory reasoning, since the Board of Appeal found, on the one hand, that the intervener did not put forward any argument as to whether that mark was deceptive with regard to those goods, while finding, on the other hand, that that mark could deceive the relevant public as to the nature of those goods.
124    Secondly, the intervener’s argument that, in order to find that the contested mark could deceive the relevant public as to the nature of goods other than ‘mineral water complying with the specifications of [the PGI]’, the Board of Appeal took into account well-known facts, cannot succeed either. In that regard, it must be stated that, whilst it is apparent from the case-law that, where a party challenges the validity of a registered mark, relying on evidence in support of its application for a declaration of invalidity, the Board of Appeal is required to examine that evidence and to take into account the existence of well-known facts that the examiner might have omitted to take into consideration in the registration procedure (see judgment of 3 May 2018, Raise Conseil v EUIPO – Raizers (RAISE), T‑463/17, not published, EU:T:2018:249, paragraph 28 and the case-law cited), the well-known facts taken into account by the Board of Appeal, if established, are based on the assumption that the relevant public perceives the contested mark as a reference to mineral water with specific properties on account of its geographical origin. As is apparent from paragraph 118 above, it has not been established, in the present case, that the relevant public perceives that mark as a reference to such a product, with the result that they cannot be regarded as relevant.
125    Thirdly, as regards the intervener’s argument that the applicant misinterprets Article 8(3) of Directive 2009/54, it should be noted that, according to that provision, when the labels or inscriptions on the containers in which the natural mineral waters are offered for sale include a trade description different from the name of the spring or the place of its exploitation, that place of exploitation or the name of the spring shall be indicated in letters at least one and a half times the height and width of the largest of the letters used for that trade description. In that regard, it should be noted that, contrary to the intervener’s submission, the applicant refers to that provision in order to demonstrate that the relevant public will not be deceived as to the geographical origin of the goods and does not mention the fact that the contested mark does not deceive that public as to the characteristics of the water. In any event, in the contested decision, the Board of Appeal did not rely on that provision.
126    Therefore, the present plea must be upheld.
127    Having regard to all the foregoing considerations, the main action must be upheld.
B.      The cross-claim
128    In support of the cross-claim, the applicant relies, in essence, on a single plea in law alleging infringement of Article 7(3) and Article 52(2) of Regulation No 207/2009.
129    The intervener submits that the Board of Appeal erred in law in finding that the contested mark had acquired distinctive character through use in Bulgaria for ‘mineral water complying with the specifications of [the PGI]’.
130    First, the intervener submits that the evidence submitted by the applicant in support of its claim of distinctive character acquired through use relates to the figurative mark DEVIN. It submits that that evidence refers to the product, namely bottled water from the Devin mineral water supply, and that Devin mineral water is marketed under the figurative mark DEVIN. Accordingly, the relevant consumer perceives the trade description of the goods as an indication of their nature and characteristics and the corresponding graphic design as a trade mark designating its commercial origin, namely the bottling company. In addition, the intervener considers that part of that evidence directly indicates the geographical origin of the goods. Second, it states that it is apparent from the ‘Omnibus’ survey carried out in 2016, which it submitted before the Second Board of Appeal, that consumers do not associate each sign that consists of or contains the word ‘devin’ with mineral water. The study shows that 35% of persons questioned associate the word ‘devin’, written in standard font, with the town of the same name.
131    EUIPO and the applicant dispute the intervener’s arguments.
132    In that regard, it should be borne in mind that, under Article 52(2) of Regulation No 207/2009, where an EU trade mark has been registered in breach of the provisions of Article 7(1)(b), (c) or (d), 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.
133    Thus, Article 52(2) of Regulation No 207/2009 covers marks in respect of which the registration was contrary to Article 7(1)(b), (c) or (d) of that regulation and which, in the absence of such a provision, would have been declared invalid pursuant to Article 52(1) of that regulation. Its precise purpose is to maintain the registration of those marks which, because of the use that has been made of them, have in the meantime, that is to say, after their registration, acquired distinctive character for the goods or services for which they were registered, notwithstanding the fact that, when it took place, that registration was contrary to Article 7 of Regulation No 207/2009 (see judgment of 10 June 2020, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern), T‑105/19, not published, EU:T:2020:258, paragraph 60 and the case-law cited).
134    According to the case-law, in order to determine whether a mark has acquired distinctive character in consequence of the use that has been made of it in accordance with Article 52(2) of Regulation No 207/2009, the competent authority must carry out an examination by reference to the actual situation and make an overall assessment of the evidence that the mark has come to identify the goods or services concerned as originating from a particular undertaking (see judgment of 19 June 2014, Oberbank and Others, C‑217/13 and C‑218/13, EU:C:2014:2012, paragraph 40 and the case-law cited).
135    In that regard, account must be taken, inter alia, of the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the portion of the relevant class of persons who, because of the mark, identify the product as originating from a particular undertaking, statements from chambers of commerce and industry or other trade and professional associations as well as opinion polls (see judgment of 10 June 2020, Representation of a chequerboard pattern, T‑105/19, not published, EU:T:2020:258, paragraph 63 and the case-law cited).
136    The acquisition of distinctive character through use of the mark requires that at least a significant portion of the relevant public identifies the goods or services concerned as originating from a particular undertaking because of the mark (judgments of 1 February 2013, Ferrari v OHIM (PERLE’), T‑104/11, not published, EU:T:2013:51, paragraph 37, and of 22 March 2013, Bottega Veneta International v OHIM (Shape of a handbag), T‑409/10, not published, EU:T:2013:148, paragraph 75).
137    In order to determine whether the grounds for refusal laid down in Article 7(1)(b) to (d) of Regulation No 207/2009 must be excluded on account of the acquisition of distinctive character through use, the only relevant situation is as exists in the part of the territory of the European Union where the grounds for refusal have been established (see judgment of 10 December 2008, Bateaux mouches v OHIM – Castanet (BATEAUX MOUCHES), T‑365/06, not published, EU:T:2008:559, paragraph 36 and the case-law cited).
138    In the present case, it should be noted, in the first place, that, as is apparent, in essence, from paragraph 53 of the contested decision, the Board of Appeal assessed the distinctive character acquired through use as at the filing date of the application for a declaration of invalidity, namely 11 July 2014, in the territory in which it had been regarded as descriptive, namely Bulgaria.
139    There is no reason to call into question those findings which, moreover, are not disputed by the intervener.
140    In the second place, it should be noted that the applicant submitted a body of evidence during the administrative proceedings before EUIPO for the purpose of establishing that the contested mark had acquired distinctive character, namely, inter alia:
–        Decision No 22-OM of the Patent Office of the Republic of Bulgaria of 19 March 2010 declaring that the contested mark is well known in Bulgaria in relation to mineral water in Class 32;
–        reports from the Bulgarian Soft Drinks Association, dating from 2000 to 2004;
–        a survey of household purchases of mineral water carried out by an independent survey institute in Bulgaria dated 2000;
–        a survey of the bottled water market conducted by another company dated 2005;
–        a market survey for bottled mineral waters dated 2002;
–        press articles dating from 1999 to 2003;
–        data on advertising, contracts and advertising materials dating inter alia from 2001 and 2002;
–        a declaration of the quantity of goods sold under the mark DEVIN for the period 2008 to 2013.
141    In paragraph 50 of the contested decision, the Board of Appeal stated that the Cancellation Division had considered that, taking into account the documents submitted by the applicant, in particular Decision No 22-OM of the Patent Office of the Republic of Bulgaria of 19 March 2010, articles in newspapers and magazines and data on advertising and donations, as well as contracts and advertising materials, it had to be held that the contested mark had acquired distinctive character through use in Bulgaria. The Board of Appeal found, in paragraph 53 of that decision, that, in the light of the evidence submitted by the applicant, ‘especially [of] the geographical extent of the descriptiveness [of] the registered PGI’, it was possible to find that that mark had acquired distinctive character through use for ‘mineral water complying with the specifications of [the PGI]’.
142    It follows from those considerations that the Board of Appeal, first, took into account, in its assessment, Decision No 22-OM of the Patent Office of the Republic of Bulgaria of 19 March 2010. In that regard, it must be borne in mind that, although EUIPO is not bound by decisions given by national authorities and although, in so far as the application of EU trade mark law is independent of any national system, the legality of EUIPO’s decisions cannot be called into question solely on the basis of the assessments in earlier national decisions, those decisions may nevertheless be taken into consideration by EUIPO in the context of the assessment of the facts of the case (see, to that effect, judgments of 21 April 2004, Concept v OHIM (ECA), T‑127/02, EU:T:2004:110, paragraphs 70 and 71; of 9 July 2008, Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 45; and of 25 October 2012, riha v OHIM – Lidl Stiftung (VITAL&FIT), T‑552/10, not published, EU:T:2012:576, point 66).
143    Moreover, in paragraph 35 of the annulment judgment, the Court held that ‘since the Bulgarian word mark Devin [had] been recognised as having a reputation by the Patent Office of the Republic of Bulgaria, it appears, prima facie, extremely implausible that the contested mark, namely the European Union word mark DEVIN, has not acquired there, at the very least, normal distinctive character, without there being any need to rule on its increased distinctive character or its reputation’.
144    In the present case, it is sufficient to observe that, in the decision of the Patent Office of the Republic of Bulgaria of 19 March 2010, that is, before the filing date of the application for a declaration of invalidity, lodged on 11 July 2014, it was found, inter alia, following the analysis of several items of evidence submitted by the applicant, that the mineral water identified by the mark DEVIN was in second place in the Bulgarian market for bottled water with a market share of 24.57%, that 38% of the persons questioned in a survey spontaneously associated the word mark DEVIN with the commercial origin of bottled mineral water, that, according to the 2005 market survey on the bottled water market in Bulgaria, 29.2% of the persons questioned made a link to the mark DEVIN in response to the question ‘when you think of bottled water, which is the first brand that comes to your mind’, that, according to the reports from the Bulgarian Soft Drinks Association dated from 2000 to 2004, the applicant was among the leading producers of soft drinks in Bulgaria, or that the applicant had made efforts to promote its brand, including in association with figurative elements, and to increase its visibility by sponsoring sporting and cultural events.
145    Second, it should be noted, as is apparent from paragraph 53 of the contested decision, that the Board of Appeal took into account other evidence produced by the applicant before EUIPO.
146    In that regard, it is sufficient to note that, in addition to the reports from the Bulgarian Soft Drinks Association dated from 2000 to 2004, the survey of household purchases of mineral water dating from 2000, or the survey of the bottled water market conducted in 2005, taken into account by the Patent Office of the Republic of Bulgaria in its Decision No 22-OM of 19 March 2010, the applicant also submitted evidence which allows a finding that the contested mark had been promoted through different media, namely via newspapers, marketing and advertising material and via sporting events, festivals and other events. That evidence contains representative data on the intensity, duration and the regularity of use of that mark.
147    Accordingly, in the light of the file, and having regard to the market share, duration and intensity of use of the contested mark, the proportion of the relevant class of persons which identifies the product as originating from the applicant’s undertaking, and in the light of the reports by trade associations, the evidence regarding the distribution of the product supports the conclusion that the Board of Appeal did not make an error of assessment in finding that the contested mark had acquired distinctive character through use in Bulgaria for ‘mineral water complying with the specifications of [the PGI]’.
148    The intervener’s arguments are not such as to call that finding into question.
149    First, the intervener’s argument that the evidence submitted by the applicant relates to the figurative mark DEVIN and does not demonstrate that the contested mark, which is a word mark, has acquired distinctive character through use, cannot succeed.
150    In that regard, it must be borne in mind that the acquisition of distinctive character may be a result both of the use, as part of a registered trade mark, of a component thereof, and of use of a separate mark in conjunction with a registered trade mark. In both cases, it is sufficient that, in consequence of such use, the relevant class of persons actually perceive the product or service, designated exclusively by the mark applied for, as originating from a particular undertaking (judgments of 7 July 2005, Nestlé, C‑353/03, EU:C:2005:432, paragraph 30, and of 17 July 2008, L & D v OHIM, C‑488/06 P, EU:C:2008:420, paragraph 49). Therefore, regardless of whether the sign is used as part of a registered trade mark or in conjunction with the registered trade mark, the fundamental condition is that, as a consequence of that use, the sign may serve to identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking (judgment of 16 September 2015, Société des Produits Nestlé, C‑215/14, EU:C:2015:604, paragraph 65).
151    In the present case, although it is apparent from the file that a certain amount of the evidence adduced by the applicant, such as press articles or advertising materials, contains the word element ‘devin’ written with a particular typography in the colour blue in the context of a figurative mark, it must be held, as is apparent from paragraphs 140 to 147 above, that the overall analysis of distinctive character acquired through use supports a finding that the applicant has sufficiently established that the contested mark could, in the minds of the relevant class of persons, designate the mineral water in Class 32 sold under the DEVIN mark as originating from its undertaking.
152    Secondly, as regards the intervener’s argument that, in essence, the relevant public would perceive the contested mark as referring to the product, namely the mineral water from the Devin mineral water supply, with the result that it will regard the applicant as being one of the producers of that type of product, like other signs such as Gorna Banya or Hisar, it should be noted, as EUIPO submits, that, unlike the other examples presented by the intervener, the applicant operates in the context of a licence for commercial exploitation of mineral water originating from the Devin sources and that the parties do not dispute that no other operator has used the word sign DEVIN for mineral water since the applicant commenced its production.
153    Thirdly, as regards the intervener’s argument that in two newspaper articles, namely the articles ‘Germans will drink water from Devin’ and ‘American soldiers drink water from Devin’, reference is made to the geographical origin of the goods, it should be noted, as follows, in essence, from paragraph 134 above, that distinctive character must be assessed with regard to all the evidence. Therefore, that argument of the intervener cannot call into question the Board of Appeal’s findings that, in essence, with regard to all the evidence submitted by the applicant, the relevant public identifies mineral water in Class 32 sold under the DEVIN mark as originating from the applicant’s undertaking.
154    In any event, it should be noted that the article headed ‘Germans will drink water from Devin’ is accompanied by an image showing a pallet of bottles of mineral water produced by the applicant.
155    Fourthly, the intervener claims that the ‘Omnibus’ survey conducted in 2016 indicates that consumers do not associate each sign that consists of or contains the word ‘devin’ with mineral water and shows that 35% of the persons questioned associate that word, written in standard typeface, with the town of the same name.
156    In that regard, it must be held, without there being any need to consider its admissibility under Article 27(4) of Delegated Regulation 2018/625 disputed by the applicant, that the intervener misunderstands the ‘Omnibus’ survey. It must be observed, as EUIPO and the applicant did, that the question asked in that study concerned knowledge of the word ‘devin’ written in Cyrillic, whereas the contested mark is written in Latin. Moreover, the question to which the persons asked had to respond was not put in the context of mineral waters, since the trade marks were, by their nature, associated with the goods and services that they designate. Therefore, the intervener’s argument based on that study cannot succeed.
157    It follows from all the foregoing that the Board of Appeal was correct in finding that the contested mark had acquired distinctive character through use in Bulgaria for ‘mineral water complying with the specifications of [the PGI]’.
158    In view of all the foregoing considerations, the single plea in law put forward by the intervener must be rejected and, consequently, the cross-claim must be dismissed.
159    Having regard to the foregoing considerations, the contested decision must be annulled in part in so far as the Board of Appeal found that the contested mark had to be declared invalid for all goods except ‘mineral water complying with the specifications of [the PGI]’.
IV.    Costs
160    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.
161    In the present case, in respect of the main action, since EUIPO has been unsuccessful and the applicant has not applied for costs against the intervener, EUIPO must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant. Furthermore, the intervener, which has been unsuccessful, must be ordered to bear its own costs.
162    Since the intervener has been unsuccessful in the cross-claim, it must be ordered to bear its own costs and to pay the costs incurred by the applicant and by EUIPO, in accordance with the forms of order sought by the applicant and by EUIPO.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 28 May 2020 (Case R 2535/2019-1) in so far as it declared the EU trade mark number 9 408 865 to be invalid for all the goods covered other than the product ‘mineral water complying with the specifications of the [protected geographical indication] Devin Natural Mineral Water’ in Class 32;
2.      Dismisses the cross-claim;
3.      Orders, in respect of the main action, EUIPO to bear, in addition to its own costs, the costs incurred by Devin EAD; and orders Haskovo Chamber of Commerce and Industry to bear its own costs;
4.      Orders, in respect of the cross-claim, Haskovo Chamber of Commerce and Industry to bear its own costs and to pay the costs incurred by Devin and by EUIPO.
Costeira
Perišin
Zilgalvis
Delivered in open court in Luxembourg on 14 December 2022.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.