The General Court rules that the name of the town of Devin can be a word mark for bottled water
The General Court of the EU rendered a decision, stating that the name of a Bulgarian town can be registered as a word trademark for indicating bottled water that originates from it.
DEVIN EAD is a leading Bulgarian producer of bottled water and has been on the local market for over 20 years. Its main product – mineral water in both natural and sparkling variety have always been branded with the trademark DEVIN. The company holds a number of national registrations in Bulgaria, including a word mark, which has been declared to be well-known on the territory of the Republic of Bulgaria, as well EUTM registration of the word mark DEVIN for goods in class 32, including bottled waters.
In mid 2014, the Haskovo Chamber of Commerce started a cancellation procedure against the EUTM DEVIN, citing breach of art. 7(1)(c), 7(1)(g) and 7(1)(f) of the Community Trademark Regulation, in force at that time. It was claimed that
DEVIN EAD was represented before the EUIPO by Pavlov & Co and argued against all the above allegations. It was first pointed out that the trademark DEVIN was well-known in Bulgaria, and as such, has at the very least acquired distinctive character on the territory of Bulgaria and for the Bulgarian consumers, which overcame any objection regarding descriptiveness for the territory of Bulgaria. With regards to the territories outside of Bulgaria, the town of Devin was unknown and so no connection between the name “DEVIN” and the goods in class 32. Also, there was nothing deceitful about the registration as nothing proved that there was actual deceit of the relevant public, or that it was impossible to use the sign in a non-deceitful way. Last, but not least, the registration was not contrary to any national or international legislation, and the name “DEVIN” was indeed free for use by any entity, producing good in DEVIN, if it was not used to indicate commercial origin, but rather geographical origin of the said goods, which even the CTMR allowed for. A number of evidence, showing the well known status of the trademark in Bulgaria (in addition to the quoted decision of the BPO) were also presented.
The Cancellation division dismissed the request with regards to art. 7(1)(g) and 7(1)(f), in essence agreeing with the arguments of the trademark holder, but upheld the cancellation request with regards to the descriptiveness of the sign. While it agreed that it was proven that the sign had acquired distinctiveness in Bulgaria, given the extensive use and well known status, it stated that in adjacent countries – Romania and Greece, whose citizens were the most frequent visitors of Bulgaria (with over 1 million tourists every year) the sign was not proven to have acquired distinctiveness, and the local public would still be familiar with the town of Devin and its mineral water resources, as Devin was a spa-resort in Bulgaria. It was also argued that given the large number of visitors in Bulgaria from other countries, like Germany and the UK, the same was also valid for those consumers, who would all perceive Devin as an indication of the origin of the goods, being familiar with the name of the town. For this reason, the cancellation request was upheld on that ground.
This decision was appealed by the trademark holder. Evidence was presented, showing that despite the fact that Devin is a spa-resort, the numbers of foreign tourists visiting the town is minimal (numbers of tourists from all countries evoked in the decision was below 100 per year, with some years even showing single digit figures). Also, researches about the alleged “notoriety” of Devin in Greece, Romania, Germany and the UK were presented, which showed that the percentage of people that actually connected the word "Devin“ with a “town” or “place” (regardless of where exactly it was located) was minimal.
The Board of Appeals dismissed the appeal, in essence repeating the conclusions of the Cancellation division. With regards to the new evidence, it was argued that Devin was present as a destination in Bulgaria in some online websites relationg to tourism in Bulgaria and, thus, tourists planning their visit to Bulgaria would have encountered it, and the data in the researches was “inconclusive”, the researches were not carried out adequately, and even then the numbers of people recognizing Devin as a “town” or “place” were not insignificant, as given the population of the respective countries, even minimal percentages amounted to a few hundred thousand people.
DEVIN EAD decided to bring the matter before the General Court, hiring a renowned European Law firm Bird and Bird to present the appeal, with the team of Pavlov & Co working closely with them, as the main arguments in the proceedings were already developed. The case was presented with the above arguments reinforced by instances from the practice of the Court that showed the flaws of the EUIPO in interpreting the facts of the case.
On 25.10.2018 the General Court issued a decision, annulling the contested decision of the Board of Appeals. The Court found that the EUIPO erred in basing its decision mainly on assumptions that were not supported by any evidence. In essence, the Court agreed with the arguments of the trademark holder, listed above, that the only part of the relevant public, for which the contested mark is descriptive is Bulgarian part, but “since the Bulgarian word mark Devin has 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”. With regards to the other territories there was no data to support the conclusions of the EUIPO. On the contrary – the evidence provided showed that consumers outside Bulgaria were basically unfamiliar with the town of Devin and those of Greece and Romania were familiar only in insignificant part, so they could make no connection between the brand DEVIN and the geographical origin of the goods. The court also stated, that “the name of the town of Devin remains available to third parties not only for descriptive use, such as the promotion of tourism in that town, but also as a distinctive sign in cases of ‘due cause’ and where there is no likelihood of confusion excluding the application of Articles 8 and 9 of Regulation No 207/2009” and such an argument could not validate the cancellation of the sign.