Descriptiveness of non-EU languages for EU trademarks: PLOMBIR out cold

Background

Monolith Frost GmbH (Cancellation Applicant) filed an application for invalidity against the trademark registration of Dovgan GmbH (EUTM Owner) for the word PLOMBIR (Contested Mark) for goods in classes 29 and 30 (including "edible ice creams"), arguing that the mark would be understood as the transliteration of the word ‘ice cream’ in Russian.

With its decision of 14 July 2015 in case C-000009343 the Cancellation Division affirmed the lack of distinctive character of the Contested Mark. This decision, first reversed by the Board of Appeal (BoA) (decision no. R 1812/2015-4 of 22 September 2016), was then confirmed by the General Court ( GC), with its decision no. T-830/16 of 13 December 2018. According to the GC, the BoA had committed an error of assessment in determining the relevant public. Moreover, it had infringed Article 7(2) of Regulation No 207/2009, since in its decision it failed to take into account the Baltic States, where a large part of the population speaks or understands the Russian language.

The EUTM Owner appealed against the GC ruling before the CJEU, alleging distortion of evidence and a breach of the duty to state reasons. With its decision of 18 June 2020 in case C-142/19 P the CJEU confirmed the findings of the GC.

Descriptive terms - EUIPO context

According to article 7(1)(c) EUTMR, a sign must be refused as descriptive if it has a meaning that is immediately perceived by the relevant public as providing information about the goods and services applied for. This is the case where the sign provides information about, inter alia, the quantity, quality, characteristics, purpose, kind and/or size of the goods or services. The relationship between the term and the goods and services must be sufficiently direct and specific (decision of the General Court of 20 July 2004 in case no. T-311/02, Limo, para. 30), as well as concrete, direct and understood without further reflection (decision of the General Court of 26 October 2000 in case no. T-345/99, Trustedlink, para. 35).

Non-EU languages - EUIPO context

Following the practice of the Office, registration of a sign must be refused if it is descriptive in any of the official languages of the EU, regardless of the size or population of the respective country. However, should there be convincing evidence that a given term has a meaning in a language other than the official languages of the EU and is understood by a significant section of the relevant public in at least a part of the EU, this term must also be refused pursuant to Article 7(2) EUTMR (decision of General Court of 13 September 2012 in case no. T-72/11, Espetec, paras. 35-36). For instance, in its decision of 13 June 2012 in case no. T-534/10, the General Court noted that the term ‘Hellim’ consisted in the Turkish translation of the word ‘Halloumi’ - a type of cheese - and  concluded that, since the Turkish language is understood and spoken by part of the population of Cyprus, the average consumer in Cyprus may understand ‘Hellim’ as a descriptive reference to cheese.

CJEU on the relevant Russian-speaking public

In its decision the CJEU confirms the findings of the GC, concluding that the Russian language can be presumed as being understood by a significant section of the relevant public in at least a part of the EU. The Court reasoning for this is that it is "a well-known fact that a significant proportion of the nationals of the Baltic States understood or spoke Russian as their mother tongue" and that, consequently, this circumstance alone is sufficient to justify the GC findings (para. 40).

Moreover, as the GC held in its decision, and contrary to the BOA's conclusion, the evidence submitted by the Cancellation Applicant conclusively establishes that a significant part of the German population speaks Russian. Indeed, according to the GC, it is apparent from the judgment of the Landgericht Köln (Regional Court of Cologne, Germany) of 27 January 2016, that the Russian-speaking population residing in Germany is approximately three million people.

CJEU on  PLOMBIR  for ice-cream related goods

The Court confirms the GC conclusions, finding that the relevant Russian-speaking public in the EU would regard the Contested Mark as a descriptive reference to ice-creams. In particular, the following GC reasoning should be noted

• The BOA did not mention any element which would allow the conclusion that that the term "Plombir" was no longer in use in Russia. Moreover, the circumstance that the term 'ice cream' would be translated with the expression "(sliwotschnoje) moroschenoje" in some German-Russian dictionaries, does not exclude that the term "Plombir" is also used to designate such products.
   
• Contrary to the EUTM Owner's allegations, the fact that the term "Plombir" would also be used to designate other products is not capable of calling this into question conclusion. In fact, according to settled case-law, the fact that an expression can have multiple meanings does not exclude the existence of a descriptive character, within the meaning of the Article 7(1)(c) EUTMR.
   
• The transliteration into Latin characters of a term resulting from another alphabet is not necessarily an obstacle to the perception by the public of reference of the descriptive meaning of that term. Thus, in so far as the term "Plombir" is the faithful transliteration of the term, its descriptive meaning is suitable to be immediately and directly taken by the Russian-speaking consumer in the EU.

Comment next steps

By invalidating the Contested Mark, the CJEU confirms that a word mark filed in a non-EU language can be regarded as descriptive in the EU, provided that the term has a meaning in a language other than the official languages of the European Union and is understood by a significant section of the relevant public in at least a part of the European Union.

This decision, by impacting on the reference base for the assessment of absolute grounds, may well make it more difficult for EUTM applications to successfully overcome the assessment of distinctiveness, regardless of the fact the sign is descriptive in a language which does not constitute an official language of the EU.

Moreover, the CJEU ruling should also be assessed in the light of the current practice of the Office, that is the well-settled principle according to which EU consumers would not understand trademarks in non-EU script, such as Chinese characters. In the long run, it is reasonable to expect that similar rulings may impact on the validity of this assumption.