JUDGMENT OF THE COURT OF FIRST INSTANCE (Second Chamber)
19 November 2009 (*)
(Community trade mark – Invalidity proceedings – Community word mark CANNABIS – Absolute ground for refusal – Descriptive character – Articles 7(1)(c) and 51(1)(a) of Regulation (EC) No 40/94 (now Articles 7(1)(c) and 52(1)(a) of Regulation (EC) No 207/2009))
In Case T‑234/06,
Giampietro Torresan, residing in Rothenburg (Switzerland), represented by G. Recher, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock and O. Montalto, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Klosterbrauerei Weissenohe GmbH & Co. KG, established in Weissenohe (Germany), represented by A. Masetti Zannini de Concina, M. Bucarelli and R. Cartella, lawyers,
intervener,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 29 June 2006 (Case R 517/2005-2), relating to invalidity proceedings between Klosterbrauerei Weissenohe GmbH & Co. KG and Giampietro Torresan,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Second Chamber),
composed of I. Pelikánová, K. Jürimäe and S. Soldevila Fragoso (Rapporteur), Judges,
Registrar: J. Palacio González, Principal Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 4 September 2006,
having regard to the response of OHIM lodged at the Registry on 27 November 2006,
having regard to the pleading of the intervener lodged at the Registry on 26 January 2007,
having regard to the change in the composition of the Chambers of the Court of First Instance,
further to the hearing on 5 May 2009,
gives the following
Judgment
Background to the dispute
1 On 12 February 1999, the applicant, Mr Giampietro Torresan, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p.1)).
2 Registration as a trade mark was sought for the word sign CANNABIS.
3 The goods in respect of which registration of the mark was sought are in Classes 32, 33 and 42 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, for each of those classes, to the following description:
– ‘Beers’ (Class 32);
– ‘Wine, spirits, liqueurs, sparkling beverages, sparkling wine, champagne’ (Class 33);
– ‘Providing of food and drink, restaurants, self-service restaurants, public houses, ice cream parlours, pizzerias’ (Class 42).
4 On 16 April 2003, the Community trade mark CANNABIS was registered under number 1073949.
5 On 27 June 2003, the intervener, Klosterbrauerei Weissenohe GmbH & Co. KG, filed an application pursuant to Articles 51(1)(a) and 7(1)(c), (f) and (g) of Regulation No 40/94 (now Articles 52(1)(a) and 7(1)(c), (f) and (g) of Regulation No 207/2009) for a declaration that the trade mark CANNABIS was invalid as regards the goods in Classes 32 and 33.
6 By decision of 9 March 2005, the Cancellation Division of OHIM declared the registration of the Community trade mark to be invalid as regards the goods in Classes 32 and 33 of the Nice Agreement as it found that the mark CANNABIS was descriptive in terms of Article 7(1)(c) of Regulation No 40/94.
7 On 29 April 2005, the applicant lodged an appeal seeking the annulment of that decision. By decision of 29 June 2006 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. It found, in particular, first, that the word ‘cannabis’ designated, in everyday language, either a textile plant or a narcotic substance and, secondly, that it was, for the average consumer, a clear and direct indication of the characteristics of goods in Classes 32 and 33.
Forms of order sought
8 The applicant claims that the Court should:
– annul the contested decision;
– confirm the registration of the Community trade mark CANNABIS for Classes 32 and 33;
– order OHIM to pay the costs.
9 OHIM and the intervener contend that the Court should:
– dismiss the action as unfounded;
– order the applicant to pay the costs.
10 At the hearing, the applicant declared that he was withdrawing its second head of claim, formal note of which was taken in the minutes of the hearing.
Law
11 In support of his action, the applicant relies on a single plea in law alleging infringement of Articles 51(1)(a) and 7(1)(c) of Regulation No 40/94. The intervener relies on two pleas in law alleging, first, infringement of Articles 51(1)(a) and 7(1)(g) of Regulation No 40/94 and, secondly, infringement of Articles 51(1)(a) and 7(1)(f) of that regulation.
Arguments of the parties
12 The applicant maintains that the trade mark CANNABIS has distinctive character, given that it is both a common name and a purely fanciful mark and has no connection, even indirect, with beer and beverages in general. As a common name, the word ‘cannabis’ constitutes the scientific name of a flowering plant from which certain drugs are extracted and from which certain therapeutic substances may be obtained. The sign CANNABIS has been present on the Italian market since 1996 and, since 1999, as a Community trade mark for goods in Classes 32 and 33 of the Nice Agreement. It has acquired a high degree of renown in the Community context.
13 The applicant submits that the word ‘cannabis’ does not constitute the normal way of designating beers or alcoholic beverages in Class 33. First, in view of Directive 2000/13/EC of the European Parliament and of the Council of 20 March 2000 on the approximation of the laws of the Member States relating to the labelling, presentation and advertising of foodstuffs (OJ 2000 L 109, p. 29) and Council Directive 88/388/EEC of 22 June 1988 on the approximation of the laws of the Member States relating to flavourings for use in foodstuffs and to source materials for their production (OJ 1988 L 184, p. 61), cannabis should not be regarded as a foodstuff, but rather as a narcotic and a psychotropic, which, according to the applicant, precludes any possibility of lawful use in the Community context. Secondly, as is apparent from the definitions contained in various dictionaries, that word refers, in the popular imagination, to the narcotic obtained from the plant of the same name.
14 The applicant also states that, in the present case, the beer CANNABIS is a flavoured beer, which consists solely of lawful and authorised raw materials. As foodstuffs, beer and, in general, alcoholic beverages may not contain prohibited substances such as drugs. Therefore, the relevant public cannot immediately and without further thought establish a direct and specific relationship between the goods in respect of which the mark has been registered and the sign CANNABIS, as required by settled case-law.
15 The applicant submits that the trade mark CANNABIS cannot be categorised as a descriptive mark because the true position is that the sign CANNABIS is an evocative word, which is intended to attract the attention of consumers and may give rise to the idea of pleasure, distraction or relaxation. As it is a ‘paradoxical’ and ‘hyperbolic’ message in the same way as other marks, such as OPIUM or COCA-COLA, all those marks should be subject to the same level of assessment and the cancellation of the Community trade mark at issue on the basis of such arguments infringes the general principle of equal treatment.
16 The applicant also disputes the definition of average consumer contained in the contested decision because that consumer is not a consumer of narcotics, seeking the same sensations as those obtained during the consumption of cannabis, or a ‘habitual alcoholic’. The applicant considers the average consumer to be a beer enthusiast whose level of intelligence, attention and care corresponds to the average level of the type of customers for which the product is intended. He also maintains that it is necessary to consider whether an informed consumer immediately thinks when he buys a beverage bearing the trade mark CANNABIS that it is really cannabis. In the present case, the applicant submits that the average consumer will check the ingredients in the product on the label. Consequently, only a poorly-informed consumer would regard the word ‘cannabis’ as a clear and direct indication of the quality of the goods in question.
17 Lastly, the applicant maintains that the mark at issue cannot be regarded as descriptive because, first, there is no existing direct connection between it and the goods in Classes 32 and 33 of the Nice Agreement and, secondly, it cannot reasonably be submitted, as required by the case-law, that such a connection will reasonably be established in the future. That the prohibition on the use of cannabis will probably be lifted in the near future is only the personal opinion of OHIM and cannot be regarded as satisfying the requirement that, in the future, a direct connection between the mark CANNABIS and the goods at issue may reasonably be established.
18 OHIM and the intervener dispute all the arguments put forward by the applicant.
Findings of the Court
19 It must be pointed out first of all that, as the Board of Appeal stated in paragraph 22 of the contested decision, the word ‘cannabis’ has three possible meanings. First, the word ‘cannabis’ refers to a textile plant the common organisation of the market in which is regulated within the Community framework and the production of which is subject to very strict legislation as regards the content of tetrahydrocannabinol (THC), the active ingredient of cannabis, which may not exceed the threshold of 0.2% (see Article 5a of Council Regulation (EC) No 1251/1999 of 17 May 1999 establishing a support system for producers of certain arable crops (OJ 1999 L 160, p. 1), as amended, and Article 7b(1) and Annexes XII and XIII to Commission Regulation (EC) No 2316/1999 of 22 October 1999 laying down detailed rules for the application of Regulation No 1251/1999 (OJ 1999 L 280, p. 43), as amended by Commission Regulation (EC) No 206/2004 of 5 February 2004 (OJ 2004 L 34, p. 33)). Secondly, the word ‘cannabis’ refers to a narcotic which is prohibited in a great number of Member States. Thirdly, it designates a substance the possible therapeutic use of which is under discussion, as is apparent from the European Commission’s answer to written question E-0039/02 of 23 January 2002 (OJ 2002 C 147 E, p. 232).
20 It must also be noted that two scientific studies submitted by OHIM state that cannabis, also referred to as ‘hemp’, is used in the food sector in different forms (oils, herbal teas) and in different preparations (teas, pasta, bakery and biscuits, alcoholic or non-alcoholic beverages, etc.). That is borne out by the documents submitted by the intervener stating that hemp is used in the production of certain foodstuffs and beverages. The toxicological analyses carried out on those goods show that they contain a very low concentration of THC, considerably lower than the abovementioned threshold of 0.2% and that they have no psychotropic effects.
21 Lastly, contrary to the applicant’s arguments, it is apparent from Article 4 of Directive 88/388 that the use of flavourings which do not contain any element or substance in a toxicologically dangerous quantity is permitted.
22 Those findings thus show, contrary to the applicant’s arguments, first, that the word ‘cannabis’ does not merely refer to drugs and to certain therapeutic substances and, secondly, that hemp is lawfully used in the production of foodstuffs and beverages. It is therefore necessary to examine, in the light of those findings, whether the word mark CANNABIS is descriptive of the goods in Classes 32 and 33 of the Nice Agreement for which it was registered.
23 Article 7(1)(c) of Regulation No 40/94 prohibits the registration as trade marks of signs and indications which may serve, in trade, ‘to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’. Those descriptive signs are incapable of fulfilling the indication-of-origin function which forms an integral part of the trade mark (Case C-191/01 P OHIM v Wrigley [2003] ECR I-12447, paragraph 31; judgment of the Court of First Instance of 2 April 2008 in Case T-181/07 Eurocopter v OHIM (STEADYCONTROL), not published in the ECR, paragraph 35; and judgment of the Court of First Instance of 21 January 2009 in Case T‑307/07 Hansgrohe v OHIM (AIRSHOWER), not published in the ECR, paragraph 22).
24 From that point of view, the signs and indications referred to in Article 7(1)(c) of Regulation No 40/94 are those which may serve, in normal usage from the point of view of the target public, to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought (Case T‑207/06 Europig v OHIM (EUROPIG) [2007] ECR II‑1961, paragraph 26; judgment of the Court of First Instance of 21 May 2008 in Case T‑329/06 Enercon v OHIM (E), not published in the ECR, paragraph 21; and judgment of the Court of First Instance of 21 January 2009 in Case T-296/07 Korsch v OHIM (PharmaCheck), not published in the ECR, paragraph 30).
25 According to settled case-law, a sign will be descriptive if there is a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of one of the characteristics of the goods and services in question (EUROPIG, paragraph 27, and STEADYCONTROL, paragraph 36).
26 It is also important to bear in mind that the descriptiveness of a sign may be assessed, first, only in relation to the relevant public’s understanding of that sign and, secondly, in relation to the goods or services in question (STEADYCONTROL, paragraph 38, and E, paragraph 23). A mark’s descriptive character must be assessed in relation to the goods for which the mark was registered and in the light of the presumed perception of an average consumer of the category of goods in question, who is reasonably well informed and reasonably observant and circumspect.
27 In the present case, the goods in question are beer, wine, spirits, liqueurs, sparkling beverages, sparkling wine and champagne. The relevant public therefore consists of the average consumer of that type of goods.
28 Contrary to what the applicant maintains, the Board of Appeal does not, in the contested decision, identify the average consumer as a consumer of narcotics, seeking the same sensations as those obtained during the consumption of cannabis, or with a ‘habitual alcoholic’. The statement at the end of paragraph 27 of the contested decision, relating to the impression which ‘those who purchase a beer’ will have when they see the word mark CANNABIS, relates to the examination of the descriptive character which the sign at issue has in the eyes of a beer consumer and not to the definition of the average consumer.
29 Against that background, it must be ascertained whether the average consumer, who is reasonably well informed and reasonably observant and circumspect, may think, merely on seeing a beverage which bears as a trade mark the word sign CANNABIS, and no other additional element, that the mark at issue constitutes a description of the characteristics of the goods in question.
30 In that regard, it must be pointed out that, as is apparent from paragraphs 27, 29 and 30 of the contested decision, there is a material link between the sign CANNABIS and certain characteristics of the abovementioned goods. As is apparent from the documents submitted by OHIM and the intervener, cannabis is habitually used in the manufacture of numerous foodstuffs, including beer and certain beverages. It is apparent from the same documents that some beers consisting of cannabis are currently present on the European foodstuffs market.
31 Furthermore, the word ‘cannabis’ is a Latin scientific term which is well known, first, in a number of European Community languages, as is apparent from paragraph 24 of the contested decision and as the applicant himself demonstrates in the application, and, secondly, to the general public as a result of media coverage, rendering it comprehensible to the target consumer throughout the Community (see, to that effect and by analogy, Case C-421/04 Matratzen Concord [2006] ECR I-2303, paragraph 32).
32 Those circumstances explain why, when he sees an alcoholic beverage or a beer bearing the trade mark CANNABIS, the average Community consumer will immediately perceive, without further thought, a description of the characteristics of the goods in question, in particular of cannabis, which is one of the ingredients which may be used as a flavouring in the manufacture thereof.
33 That characteristic is not without interest to the relevant consumer. As the Board of Appeal pointed out in paragraph 27 of the contested decision, ‘those who purchase a beer bearing the trade mark CANNABIS will very probably do so because they are convinced that it contains cannabis and are attracted by the possibility of obtaining from the beverage the same, or at the very least similar, sensations as they obtain from the consumption of cannabis in another form’. Consequently, the fact that cannabis is one of the components of the beer or alcoholic beverages constitutes a characteristic which determines the decision the consumer makes when he effects his purchase and therefore constitutes a fundamental characteristic of the goods for which the mark was registered, which is taken into account when a choice is made by the target public.
34 The applicant’s argument that the sign CANNABIS is an evocative word, which is intended to attract the attention of consumers by giving rise to the idea of pleasure, distraction or relaxation, cannot affect the descriptive impression which the sign has on them. The word sign CANNABIS inherently constitutes, for consumers, a simple and direct indication of one of the possible ingredients of the goods for which the mark was registered. Accordingly, the word sign CANNABIS goes far beyond the realm of suggestion and comes within the realm of description. That sign must therefore be regarded as descriptive and not as suggestive or allusive (see, to that effect, Case T-334/03 Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM) [2005] ECR II‑65, paragraph 37).
35 Likewise, according to the case-law, it is not necessary that the signs and the indications composing the mark actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those for which they have been registered or of characteristics of those goods or services. It is sufficient, as the wording of Article 7(1)(c) of Regulation No 40/94 itself indicates, that such signs and indications could be used for such purposes (OHIM v Wrigley, paragraph 32, and Case T-485/05 Tegometall International v OHIM – Wuppermann (TEK) [2007] ECR II-4721, paragraph 88).
36 In the present case, the single word ‘cannabis’ used as a trade mark may be held to be descriptive if it refers, actually or potentially, to one of the characteristics of the product, namely one of the ingredients that may be used in the manufacture of the beverages in question. As is apparent from the case-law, the word ‘cannabis’ will potentially be associated with one of the characteristics of the goods in question if it is reasonable to assume that such an association may be established in the future (see, by analogy, Joined Cases T-357/99 and T-358/99 Telefon & Buch v OHIM (UNIVERSALTELEFONBUCH and UNIVERSALKOMMUNIKATIONSVERZEICHNIS) [2001] ECR II‑1705, paragraphs 29 and 30, and AIRSHOWER, paragraph 30). In view of the supply of beverages containing hemp which already exists on the market, it must be held that the sign CANNABIS may at present designate one of the ingredients used in the manufacture of the goods for which the mark was registered.
37 Furthermore, it must be pointed out that, according to settled case-law, the fact that a word has a number of meanings is irrelevant in determining whether it is descriptive. Thus, contrary to the applicant’s arguments, the fact that the word ‘cannabis’ may have three different meanings has no role to play in ascertaining whether it has a descriptive character. It is sufficient for there to be a direct and specific relationship between one of the meanings and the goods in question, as is the case here, for Article 7(1)(c) of Regulation No 40/94 to be applicable (Case C‑265/00 Campina Melkunie [2004] ECR I-1699, paragraph 38, and Case T‑316/03 Münchener Rückversicherungs-Gesellschaft v OHIM (MunichFinancialServices) [2005] ECR II-1951, paragraph 33).
38 It follows from all the foregoing considerations that the sign CANNABIS refers to the cannabis plant, which is well known to the public as a result of media coverage and is used in the manufacturing processes of certain foodstuffs and beverages. The average consumer will therefore immediately and without further thought make a connection between the sign in question and the characteristics of the goods in respect of which the mark has been registered, all of which renders the sign descriptive.
39 The other arguments advanced by the applicant do not invalidate that finding. First of all, the applicant’s argument that the same level of assessment should be applied to the trade mark CANNABIS and to certain other registered trade marks must be rejected as unfounded. It is only in so far as the relationship between the sign in question and the goods and services covered is specific and direct that Articles 51(1)(a) and 7(1)(c) of Regulation No 40/94 would preclude the other abovementioned trade marks from being valid and that the invocation of such a relationship may set in motion invalidity proceedings (see, to that effect, Case T‑302/03 PTV v OHIM (map&guide) [2006] ECR II-4039, paragraph 50).
40 Secondly, the applicant’s argument that, in view of OHIM’s decision-making practice, the Board of Appeal infringed the general principle of equal treatment must also be rejected as unfounded. The lawfulness of the decisions of the Board of Appeal must be assessed solely on the basis of Regulation No 40/94 and not on the basis of OHIM’s decision-making practice (Case T-127/02 Concept v OHIM (ECA) [2004] ECR II‑1113, paragraph 71, and Joined Cases, T-211/06, T‑213/06, T‑245/06, T‑155/07 and T‑178/07 Euro-Information v OHIM (CYBERCREDIT, CYBERGESTION, CYBERGUICHET, CYBERBOURSE et CYBERHOME) [2009] ECR II-0000, paragraph 44). Furthermore, according to settled case-law, the principle of equal treatment cannot be relied on in cases of illegality because no one may rely to his own advantage on an unlawful act committed in favour of a third party (Case T-106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II-723, paragraph 67, and judgment of the Court of First Instance of 30 November 2006 in Case T-43/05 Camper v OHIM – JC (BROTHERS by CAMPER), not published in the ECR, paragraphs 93 to 95).
41 Thirdly and lastly, the applicant’s claim regarding the reputation of the trade mark CANNABIS must be rejected as irrelevant. In that regard, it must be pointed out that, in the present case, the reputation of the sign has no role to play in ascertaining whether the sign in question is descriptive. Under Article 7(3) of Regulation No 40/94 (now Article 7(3) of Regulation No 207/2009), Article 7(1)(c) of Regulation No 40/94 does not apply only if the sign in question has subsequently become distinctive by virtue of the use which has been made of it, which is not the case here.
42 As the descriptive relationship between the sign and the goods covered has been established, it is necessary to examine whether that mark contains other elements which may make it distinctive (Case C‑383/99 P Procter & Gamble v OHIM [2001] ECR I-6251, paragraph 39). In the present case, as has already been stated, what is at issue is a simple word mark. Consequently, the descriptive character of the trade mark CANNABIS cannot be affected by any other accompanying element.
43 That finding cannot be affected by the applicant’s argument that there are no illicit ingredients in the beers and alcoholic beverages for which the mark in question was registered. In actual fact, that argument in the applicant’s reasoning is paradoxical. As the intervener has stated, either the beverages at issue contain or may contain hemp and the mark CANNABIS is therefore descriptive or there is no possibility of those beverages containing hemp and they do not, in fact, contain it and the mark CANNABIS may therefore be regarded as deceptive if it gives rise to actual deceit or a sufficiently serious risk that the consumer will be deceived (see, to that effect and by analogy, Case C-259/04 Emanuel [2006] ECR I-3089, paragraph 47). In that regard, it would be necessary to prove that the relevant consumer would be led to believe that the goods in respect of which the mark was registered have a characteristic which they do not in actual fact have, whilst taking into account the fact that, in the present case, the consumer may check which ingredients are used in the manufacture of those beverages on the label.
44 It follows that the Board of Appeal did not infringe Article 7(1)(c) of Regulation No 40/94 in dismissing the appeal against the Cancellation Division’s decision as regards the descriptive character of the trade mark CANNABIS.
45 Consequently, the single plea relied on by the applicant cannot be upheld.
46 The action must therefore be dismissed without there being any need to consider the pleas put forward by the intervener.
Costs
47 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As the applicant has been unsuccessful, he must be ordered to pay the costs in accordance with the form of order sought by OHIM and the intervener.
On those grounds,
THE COURT OF FIRST INSTANCE (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Mr Giampietro Torresan to pay the costs.
Pelikánová | Jürimäe | Soldevila Fragoso |
Delivered in open court in Luxembourg on 19 November 2009.
[Signatures]