Genossenschaftskellerei Rosswag-Mühlhausen eG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (T-55/14)

Contents

Judgment of the General Court (First Chamber)14 July 2015^note(Community trade mark — Application for Community word mark Lembergerland — Absolute ground for refusal — Trade mark for wine with geographical indications — Article 7(1)(j) of Regulation (EC) No 207/2009)In Case T‑55/14,Genossenschaftskellerei Rosswag-Mühlhausen eG, established in Vaihingen-sur-l’Enz (Germany), represented by H. Steffan, lawyer,vOffice for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Poch, acting as Agent,THE GENERAL COURT (First Chamber),composed of H. Kanninen, President, I. Pelikánová and E. Buttigieg (Rapporteur), Judges,Registrar: E. Coulon,having regard to the application lodged at the Court Registry on 21 January 2014,having regard to the response lodged at the Court Registry on 10 April 2014,having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,gives the following

Judgment

Background to the dispute

1On 22 August 2012, the applicant, Genossenschaftskellerei Rosswag-Mühlhausen eG, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2The mark in respect of which registration was sought is the word sign ‘LEMBERGERLAND’.

3The goods in respect of which registration was sought are in Class 33 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘alcoholic beverages (except beers)’.

4By decision of 30 January 2013, the examiner rejected the application for registration of the goods indicated in paragraph 3 above, on the ground that the mark applied for was covered by the absolute ground for refusal referred to in Article 7(1)(j) of Regulation No 207/2009.

5On 25 March 2013 the applicant lodged an appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision.

6By decision of 14 November 2013 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the action. It found that the mark applied for contained the geographical indication Lemberg, protected in the European Union for wines originating from South Africa under Article 8(b)(ii) of the Agreement between the European Community and the Republic of South Africa on trade in wine (OJ 2002 L 28, p. 4) (‘the Agreement between the Community and the Republic of South Africa’), read in conjunction with Annex II to that Agreement, whilst the wine subject of the mark applied for did not originate from that place of provenance. It took the view that the mark applied for was not simply a new fanciful word in relation to the geographical indication Lemberg and that, in order to justify the refusal of its registration on the ground referred to in Article 7(1)(j) of Regulation No 207/2009, it sufficed that it contained or consisted of elements which enabled that geographical indication to be identified with certainty. It also considered that the fact that the term ‘Lemberg’ referred to an ‘estate’ (vineyard) and not to a region or territory did not call into question the fact that it was a geographical indication protected in accordance with the Agreement between the Community and the Republic of South Africa. It found that the references made by the applicant to other protected geographical indications under the same agreement were not relevant in the assessment of the application for registration in the case in question. Lastly, the Board stated that Article 6ter of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended (the ‘Paris Convention’) was not applicable in the case in question, since it provides only that marks concerning State emblems, official hallmarks and emblems of intergovernmental organisations are not to be registered.

Forms of order sought

7The applicant claims that the Court should:— annul the contested decision;— order OHIM to register the mark applied for;— order OHIM to pay the costs.

8The OHIM contends that the Court should:— dismiss the action;— order the applicant to pay the costs.

Law

9The applicant relies on a single plea in law in support of its action, alleging infringement of Article 7(1)(j) of Regulation No 207/2009, and claims that the Board of Appeal erred in refusing the registration of the mark applied for in accordance with that provision. First, it argues in essence that the name Lemberg designating a single vineyard estate cannot be considered as constituting a geographical indication in particular within the meaning of Council Regulation No 479/2008, of 29 April 2008 on the common organisation of the market in wine, amending Regulations (EC) No 1493/1999, (EC) No 1782/2003, (EC) No 1290/2005, (EC) No 3/2008 and repealing Regulations (EEC) No 2392/86 and (EC) No 1493/1999 (OJ 2008 L 148, p. 1). Secondly, it claims that the mark applied for is a fanciful term, which is not the same as the name Lemberg and is therefore not of such a nature as to deceive the public as regards ‘the existence of a connection between the user and the organisation’ within the meaning of the Paris Convention.

10OHIM disputes the applicant’s arguments.

11Article 7(1)(j) of Regulation No 207/2009 provides that trade marks for wines which contain or consist of a geographical indication identifying wines with respect to such wines not having that origin are not to be registered.

12The protection of geographical indications for wine is found, first, in the regulations of the European Union, particularly in those concerning the common organisation of the market in wine and, secondly, in the bilateral agreements between the European Union and third countries (see, to that effect, judgment of 11 May 2010 in Abadía Retuerta v OHIM (CUVÉE PALOMAR), T‑237/08, ECR, EU:T:2010:185, paragraphs 73 and 104 to 108).

13Under Article 8(b)(ii) of the Agreement between the Community and the Republic of South Africa protection is afforded within the European Union, with regard to wines originating in South Africa, to the geographical indications mentioned in Annex II to that Agreement. Annex II to the Agreement, ‘List of geographical indications’, paragraph B, ‘Geographical indication of wines originating in South Africa’, paragraph B 2, ‘Names of regions, districts, wards, estates’, paragraph B 2.3, ‘Coastal Region’, paragraph B 2.3.7, ‘District Tulbagh’, paragraph B 2.3.7(b), ‘Estates’, specifically mentions Lemberg.

14The Board of Appeal concluded, in paragraphs 13 and 18 of the contested decision, that Lemberg was a protected geographical indication in accordance with that Agreement. Observing that the mark applied for, for ‘alcoholic beverages (except beers)’, in Class 33, contained that protected geographical indication for wines although the wine it designated did not originate from the place of provenance stated by the geographical indication, the Board of Appeal upheld the examiner’s decision pursuant to Article 7(1)(j) of Regulation No 207/2009, refusing the registration applied for for goods in Class 33.

15In the first place, the applicant disputes that assessment, claiming that the term ‘Lemberg’ refers to one wine-growing estate and, therefore cannot be considered a geographical indication. It refers in particular to the definition of ‘geographical indication’, contained in Article 34(1)(b) of Regulation No 479/2008.

16It must be observed, as did the Board of Appeal, that Lemberg is a protected geographical indication within the territory of the European Union for wines originating from South Africa under the provisions of the Agreement between the Community and the Republic of South Africa, referred to in paragraph 13 above. Contrary to what the applicant claims, the fact that the name refers to an ‘estate’ (a wine-growing estate) and not to a region, a municipality or a district does not call into question the fact that it is expressly protected as a geographical indication under that agreement.

17As OHIM submits, nothing in the agreement itself allows the view that the wine-growing estates listed in Annex II should not benefit from the same protection under Article 8(b)(ii) of the agreement, as the regions, districts or wards that are also mentioned.

18Furthermore, as OHIM correctly observes concerning the definition of ‘geographical indication’, Article 3(b) of the Agreement between the Community and the Republic of South Africa refers to Article 22(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights, in Annex 1C to the Agreement establishing the World Trade Organisation (WTO), signed in Marrakech on 15 April 1994 and approved by Council Decision 94/800/EC on 22 December 1994 concerning the conclusion on behalf of the European Community, as regards matters within its competence, of the agreements reached in the Uruguay Round multilateral negotiations (1986-1994) (OJ 1994 L 336, p. 1) (‘the TRIPS Agreement’). The last of those provisions states that geographical indications are, for the purposes of that agreement, ‘indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin’. There is no reason to conclude that a ‘locality’ within the meaning of that provision could not be constituted by a wine-growing estate or that such a ‘locality’ must be limited to a territory based on its size or its formal administrative division.

19An etymological explanation of a place, the geographical and historical characteristics of places, the examples of different places bearing the name Lemberg in Germany, relied on by the applicant, and the observation that the origins of the Lemberg name refer to a town located in the Ukraine cannot contradict the finding that Lemberg is a geographical indication protected under the Agreement between the Community and the Republic of South Africa, as is apparent from paragraphs 16 to 18 above.

20The same is true of the argument that the applicant seeks to derive from the definition of ‘geographical indication’, contained in Article 34(1)(b) of Regulation No 479/2008. Lemberg is not a protected geographical indication under Article 36 of Regulation No 479/2008, but by virtue of the Agreement concluded between the Community and the Republic of South Africa, which, as regards the definition of ‘geographical indication’, refers to Article 22(1) of the TRIPS Agreement, as was observed in paragraph 18 above. It follows that Regulation No 479/2008 is not relevant in the present case for the purposes of assessing whether Lemberg should be considered as a geographical indication within the meaning of Article 7(1)(j) of Regulation No 207/2009. In any case, the definition of ‘geographical indication’, contained in Article 34(1)(b) of Regulation No 479/2008, does not contradict that of Article 22(1) of the TRIPS Agreement, as OHIM correctly observes.

21In the second place, the applicant submits that the mark applied for Lembergerland is not the same as the geographical indication Lemberg, mentioned in the Agreement between the Community and the Republic of South Africa, but that it is a new fanciful term, consisting of two words chosen at random, and of thirteen letters of which only seven coincide with the geographical indication. According to the applicant, the mark applied for has its own meaning denoting a ‘country of mountains and swamps’, and is not seeking to give ‘the impression of coming from the smallest wine growing estate of the Western Cape, located in South Africa’.

22In that respect it must be stated, as the Board of Appeal did at paragraph 16 of the contested decision, that according to the case-law, for the absolute ground for refusal referred to in Article 7(1)(j) of Regulation No 207/2009 to apply, it suffices that the mark applied for contain or consist of elements which enable the geographical indication in question to be identified with certainty (see to that effect, judgment in CUVÉE PALOMAR, cited in paragraph 12 above, EU:T:2010:185, paragraphs 125 and 131).

23In the present case, the sign applied for Lembergerland is a word consisting inter alia of the protected geographical indication Lemberg, that is clearly identifiable within that sign, a matter which is not, moreover, disputed by the applicant.

24However, the applicant claims in essence that if the mark applied for, viewed as a whole, is not likely to give rise to confusion with the geographical indication in question, since it has a different meaning from it (see paragraph 21 above).

25As the Board of Appeal correctly stated in paragraph 17 of the contested decision, under reference to the fourth recital in the preamble to Council Regulation (EC) No 3288/94 of 22 December 1994 amending Regulation (EC) No 40/94 on the Community trade mark for the implementation of the agreements concluded in the framework of the Uruguay Round (OJ 1994 L 349, p. 83), which introduced Article 7(1)(j) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994, L 11, p. 1) (now Article 7(1)(j) of Regulation No 207/2009), the registration of a mark must be refused if it contains or consists of a geographical indication regardless of the question whether the sign applied for is likely to deceive the consumer as regards the provenance of the wines it denotes.

26The fourth recital in the preamble to Regulation No 3288/94 states that Article 23(2) of the TRIPs Agreement provides for the refusal or invalidation of marks which contain or consist of false geographical indications for wines and spirits regardless of whether they are of such a nature as to deceive the public. Therefore, the ground for refusal laid down in Article 7(1)(j) of Regulation No 40/94 applies without it being necessary to consider whether the mark for which registration is sought is liable to deceive the public or not, or whether it leads to a likelihood of confusion regarding the origin of the product (judgment in CUVÉE PALOMAR, cited in paragraph 12 above, EU:T:2010:185, paragraphs 119 and 120).

27In that context, the applicant’s argument that the mark’s registration should not be refused, in that ‘it is not of such a nature to deceive the public on the existence of a connection between the user and the organisation’ within the meaning of Article 6ter(1)(c) of the Paris Convention must also be rejected. As the Board of Appeal observed in paragraph 23 of the contested decision, that provision is not applicable in the present case, in so far as Article 6ter of the Paris Convention provides only that marks concerning State emblems, official hallmarks and emblems of intergovernmental organisations are not to be registered, and not for the protection of geographical indications.

28In any case, contrary to what the applicant claims, the additional letters contained in the sign applied for do not confer a fanciful character on the geographical indication Lemberg, in so far as the term ‘Lemberger’ is, in the German language, an adjective that comes from the word ‘Lemberg’ and the term ‘Land’ means ‘region, territory’, in that language, which means that it is possible to interpret the sign applied for as a reference to a ‘region of Lemberg’ or a ‘territory of Lemberg’, as OHIM rightly observes. Therefore the mark applied for does not have its own autonomous meaning that would significantly distinguish it from the geographical indication Lemberg.

29Contrary to what is claimed by the applicant, it follows that the Board of Appeal was right in considering that the mark applied for Lembergerland contained or consisted of the geographical indication Lemberg, protected under the Agreement between the Community and the Republic of South Africa for wines of that provenance. The goods covered by the mark applied for include wine even though the applicant did not claim that it originates from Lemberg. The Board of Appeal was therefore right in finding that the mark applied for was covered by the absolute ground for refusal laid down by Article 7(1)(j) of Regulation No 207/2009.

30That conclusion cannot be called into question by the applicant’s other arguments.

31In the first place, the applicant states that the Board of Appeal did not take into account the registration of the mark Lembergerland in Germany.

32In that regard, it is settled case-law that the Community trade mark regime is an autonomous system with its own set of objectives and rules; it applies independently of any national system. OHIM and, if appropriate, the European Union judicature are therefore not bound by a decision given in a Member State that the sign in question is registrable as a national mark. Registrations already made in Member States of the European Union are only one factor which may be taken into account in connection with the registration of a Community trade mark and the mark applied for must be assessed solely on the basis of the relevant EU rules. It follows that OHIM is under no obligation to register the mark applied for due to a registration by the national competent trade mark authority (see, to that effect, judgment in CUVÉE PALOMAR, cited in paragraph 12 above, EU:T:2010:185, paragraphs 137 and 138 and the case-law cited, and judgment of 16 May 2013 in Restoin v OHIM (EQUIPMENT), T‑356/11, EU:T:2013:253, paragraph 74 and the case-law cited).

33Consequently, as OHIM contends, the fact that the mark applied for Lembergerland has been registered in Germany does not call into question the legality of the Board of Appeal’s decision.

34In the second place, the applicant claims that OHIM infringed the principle of equality. It states that, in the Agreement between the Community and the Republic of South Africa, various geographical indications are mentioned with or containing the element ‘fisch’ or ‘sonne’, while there are a number of marks registered for goods in Class 33 that include one of those two elements.

35In that respect, it should be recalled that the decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal of OHIM are led to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, as OHIM rightly states, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation as interpreted by the European Union judicature and not on the basis of a previous decision-making practice (see judgments of 26 April 2007 in Alcon v OHIM, C‑412/05 P, ECR, EU:C:2007:252, paragraph 65 and the case-law cited, and of 2 May 2012 in Universal Display v OHIM (UniversalPHOLED), T‑435/11, EU:T:2012:210, paragraph 37 and the case-law cited).

36Furthermore, respect for the principle of equal treatment must be consistent with respect for the principle of legality (judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraph 75). For reasons of legal certainty and sound administration, every application for registration must be the subject of a stringent and full examination, which must be undertaken in each individual case (judgment in Agencja Wydawnicza Technopol v OHIM, EU:C:2011:139, paragraph 77).

37In the present case, it must be held, first, that the Board of Appeal was not wrong in finding that the conditions laid down by Article 7(1)(j) of Regulation No 207/2009 had been met, as is stated in paragraph 29 above. Secondly, the Community marks to which the applicant refers, without providing any specific examples, may contain geographical indications consisting of or containing the element ‘fisch’ or ‘sonne’, and not ‘lemberg’. However, the proceedings before the Board of Appeal did not concern geographical indications consisting of or containing the element ‘fisch’ or ‘sonne’, also protected under the Agreement between the Community and the Republic of South Africa, as the Board has rightly noted in paragraph 20 of the contested decision. The factual circumstances are therefore not in any event comparable with those in the present case.

38It follows that the applicant cannot reasonably rely, for the purposes of undermining the conclusion reached by the Board of Appeal in the contested decision, on OHIM’s previous decisions concerning the registration of signs containing the elements ‘fisch’ or ‘sonne’ as Community trade marks (see, to that effect judgments in Agencja Wydawnicza Technopol v OHIM, cited in paragraph 36 above, EU:C:2011:139, paragraphs 78 and 78, and UniversalPHOLED, cited in paragraph 35 above, EU:T:2012:210, paragraph 39).

39In the third place, the applicant states that the protection of the South African geographical indication Lemberg has not prevented the Austrian vineyard St. Magdalena am Lemberg from also being protected as a geographical indication under the Agreement between the Community and the Republic of South Africa. It accordingly submits that the mark applied for should be able to be registered according to the same principles that allowed the view to be taken that those two indications did not conflict.

40In that regard, the Board of Appeal rightly held, in paragraph 21 of the contested decision that, even if the view were to be taken that those two geographical indications are homonymous, it must be held, in accordance with Article 7(4)(a) of the Agreement between the Community and the Republic of South Africa, that those two indications were protected because of their traditional and continuous use and because they were not liable to deceive the consumer. That assessment must be upheld. The Board of Appeal also rightly stated that, in any case, that purported legal problem did not in any way form the subject-matter of the proceedings in question.

41It follows from the foregoing that the single plea in law must be rejected and, accordingly, the appeal as a whole, without the need to rule on the plea of inadmissibility submitted by OHIM in the second head of claim.

Costs

42Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with form of order sought by OHIM.

Operative part

On those grounds,THE GENERAL COURT (First Chamber)hereby:

1.Dismisses the action;

2.Orders Genossenschaftskellerei Rosswag-Mühlhausen eG to bear the costs.

Delivered in open court in Luxembourg on 14 July 2015.