October 31, 2018

Facts

In January 2011, the claimant, the Bulgarian company, Devin AD, obtained a EU trade mark for DEVIN for non-alcoholic drinks.

In July 2014, the Haskovo Chamber of Commerce and Industry in Bulgaria, filed an application with EUIPO for a declaration of invalidity of Devin’s trade mark.

In January 2016, the Cancellation Division of EUIPO declared the mark invalid on the grounds that the geographical name Devin fell within the scope of Article 7(1)(c) of the EU Trade Mark Regulation (207/2009/EC) since it was understood by the general public in Bulgaria and a part of the public in neighbouring countries as a description of the geographical origin of the goods concerned and, in future, would potentially be understood by a wider European public in view of the marketing efforts being made and the growth of the Bulgarian tourism sector.

Devin appealed and the Second Board of Appeal dismissed the appeal, finding that the town of Devin in Bulgaria was known to the general public in Bulgaria and a significant proportion of consumers in neighbouring countries, such as Greece and Romania, as a renowned spa town.  Further, it said, the name of the town was linked, in the mind of the relevant public, with non-alcoholic drinks, particularly mineral water.

Devin appealed to the General Court.

Decision

The GC agreed with Devin that the Board of Appeal had made a distinction between three geographical categories of average consumers: (i) average Bulgarian consumers; (ii) average consumers of the neighbouring countries Greece and Romania; and (iii) average consumers of the remaining Member States of the European Union.

The GC also agreed with Devin that, as far as average Bulgarian consumers were concerned, it was true that they would understand the word “devin” to be the name of a town in Bulgaria.  However, the word was also known and clearly recognised as a water brand by a significant portion of Bulgarian consumers.  The only consumers likely to understand the word “devin” as an indication of geographical origin, namely Bulgarian consumers, were therefore also familiar with the mark because of its highly distinctive character acquired through use in relation to mineral water. Therefore, the mark DEVIN did not simply indicate the geographical origin, but was a clear indication of the commercial origin of the goods concerned, namely non-alcoholic drinks, more specifically, mineral water.

As for the average Greek or Romanian consumer, the GC noted that the BoA had relied on various data relating to tourism and had “speculated” that it was “very unlikely … that Devin, and its association with spa waters, would not appear on internet searches for holiday destinations in Bulgaria”.  However, in the GC’s view, the mere fact that the town of Devin had a detectable presence on the internet did not suffice to establish that it would be known by a significant part of the relevant public of Greece and Romania.  This reasoning, taken to its extreme, would lead to the conclusion that foreign consumers could, simply by browsing on the internet, know every town in the world, of any size, even small ones, it said.

The BoA had also held that Devin had “a detectable presence on internet websites providing reviews of travel-related content and interactive travel forums (e.g. Trip Advisor, Booking.com)”.  Again, the GC said that the existence of a “non-negligible tourist profile on the internet”, in itself, did not suffice to establish the knowledge of a small town by the relevant public abroad.  Further, the fact that the town of Devin had a “considerable tourism infrastructure” did not warrant the conclusion that such a consumer could have knowledge of the town beyond its borders or establish a direct link with it.

The GC stressed that the legal criterion to be applied was not to count, bit by bit, the number of foreign tourists visiting the town of Devin, but to establish the perception of the word “devin” by the whole relevant public of the EU, including those who did not necessarily visit Devin or Bulgaria, which was in fact the majority of that public.

The BoA, by wrongly focusing on foreign tourists, in particular Greeks or Romanians, who visited Bulgaria or Devin, did not take into consideration the entire relevant public, which consisted of the average consumer of the EU as a whole.  The GC said that the BoA had wrongly limited itself to a very small or minimal fraction of the relevant public, which, in any event, was negligible and not sufficiently representative of it.

In fact, the BoA had “hardly examined” the matter from the point of view of the average consumer in other EU Member States.  It had merely deduced, by extrapolation from survey evidence, that around 455,000 German consumers would perceive the word “devin” as the name of a town or a town in Bulgaria.  It had also said, incorrectly, that “it would be unrealistic to claim that none of these members of the general public from other Member States [who visit Bulgaria] would fail to familiarise themselves with Bulgarian culture, history and natural attractions, which would include the town of Devin, when considering their travel arrangements”.

In short, the BoA had applied the wrong test, which had inevitably led it to an incorrect factual assessment of the perception of the word “devin” by the relevant public.  The BoA’s reasons for deciding that the average consumer in Greece and Romania knew Devin as a geographical place were “neither convincing nor conclusive”.  In the GC’s view, the word “devin” was not, therefore, recognised as the designation of a geographical origin by the average consumer in the Member States of the EU other than Bulgaria.

As for ensuring that the geographical name remained available for others to use, the GC said that using the name “Devin” in a descriptive way was still permitted in order to promote the town as a tourist destination and that the contested mark did not constitute an impediment to the economic efforts to develop, beyond the borders of Bulgaria, the reputation of the town of Devin for its spa waters.

In addition, the word “Devin” was still available to third parties as a distinctive sign in cases of “due cause” and where there was no likelihood of confusion.

The general interest in preserving the availability of a geographical name could therefore be protected.  According to the GC, it was this necessary balance between the rights of the proprietor and the interests of third parties that allowed the registration of trade marks consisting of a geographical name, such as the EU word marks VITTEL and EVIAN, under certain conditions.

The BoA had therefore erred in its assessment by concluding that DEVIN was descriptive of a geographical origin as regards the average consumer.  (Case T-122/17) Devin AD v European Union Intellectual Property Office EU:T:2018:719 (25 October 2018) — to read the judgment in full, go to the curia search form, type in the case number and follow the link).