The EUIPO Grand Board of Appeal handed down its decision on April 2020 on an appeal against a declaration of invalidity of a registration for a device mark with the wording ‘La Irlandesa’, shown below. The Board of Appeal held that the mark was deceptive and in bad faith according to Articles 7(1)(g) and 59(1)(b) of the EU Trade Mark Regulation (Regulation (EU) 2017/1001) (‘EUTMR’).
The proprietor of the contested mark, Hijos de Moisés Rodríguez González S.A registered the above logo in 2014 for a range of goods in Class 29 which included meat, fish, eggs, milk and milk products. In 2015 the Irish Ministry for Jobs, Enterprise and the Irish Dairy Board jointly filed a request for a declaration of invalidity of the registration arguing that the trade mark was deceptive and had been filed in bad faith.
The invalidity applicants argued that the mark ‘LA IRLANDESA’ suggests that goods bearing the mark come from Ireland. If this is not infact that case it would be, deceptive. They invoked Article 7(1)(g) EUTMR which provides that trade marks which act to deceive the public, for instance in relation to their geographical origin, should not be registered. The request emphasised that the word element ‘LA IRLANDESA’ (which means ‘the Irish woman’ in Spanish) together with the use of the Celtic symbol of the knot device and the use of Ireland’s national colours and colours contained within the Irish flag, all suggest, erroneously, that the products are Irish.
Further arguments were made claiming the application was made in bad faith due to an existing commercial relationship between one of the invalidity applicants and the EUTM proprietor from 1967 to 2001. During this time, the EUTM proprietor bought butter from the Irish Dairy Board, to be packed and sold in the Canary Islands branded as KERRYGOLD and LA IRLANDESA. Since the end of the business relationship between the two parties, there has been a history of litigation relating to the trade marks, the Irish Dairy Board having previous succeeded in opposing three Spanish trade mark applications and cancelling an EU trade mark registration filed by the Hijos de Moisés Rodríguez González S.A.
The Decision of the Cancellation Division
The Cancellation Division rejected the request for invalidity on the basis that for Article 7(1)(g) EUTMR to apply, the mark must contain an objective indication that the goods and services registered under the mark clearly contrast with characteristics of the goods. During the time of the decision, Irish products were sold under ‘LA IRLANDESA’ so the Cancellation Division could not find any contradiction between the mark and the goods covered by the registration at the time of filing.
On the issue of bad faith, the Cancellation Division was not convinced that the EUTM proprietor had knowingly made its mark seem Irish with the intention to deceive consumers of the origin of the products. Rather, the Cancellation Division did not think that the knot device in the mark was considered to be Celtic art and that the colour green alone was not enough to conclude that the EUTM proprietor was falling short of the proper commercial behaviour.
The Cancellation Division further stated that the decisions relating to previous applications and registrations were not binding on the current decision. It held that overall, the mark was not considered to be in breach of Article 59(1)(g) EUTMR.
The Decision of the Grand Board of Appeal
The case was then referred to the Grand Board of Appeal in 2017. It held that for Article 7(1)(g) EUTMR to apply, there must be an element “of actual deceit or a sufficiently serious risk that the consumer will be deceived” (C-259/04 Elizabeth Florence Emanuel v Continental Shelf 128 Ltd 30/03/2006, § 47). Once this is properly established, it is irrelevant whether the deceitful mark might also be misleading.
The Board of Appeal considered that the mark consists of the words ‘LA IRLANDESA’, a principal and dominant element of the mark. This use of Spanish wording indicates that the relevant public purchasing this product will be Spanish-speaking consumers who would expect the products to be Irish. The green colour also plays a part in this regard as this leads the public to perceive the marked goods as originating from Ireland, even more so when most of the goods which the mark represents are often produced in Ireland (milk, butter etc.).
The Board therefore concluded that ‘LA IRLANDESA’ would act to indicate the geographic origin of these goods to Spanish-speaking consumers, being led to believe that these goods originate in Ireland. Whereas, the evidence submitted by the invalidity applicants showed that ‘LA IRLANDESA’ had in fact been used on goods which were not of Irish origin such as Dutch cheeses, ham and Danish salami. This means goods sold under the mark are not exclusively Irish. Overall, the Board of Appeal determined that Article 7(1)(g) EUTMR applies as the consumer would be deceived to think that the products are of Irish origin when in actual fact, they are not.
Considering whether the mark was filed in bad faith, the Board of Appeal noted that when the EUTM proprietor filed its first Spanish trademark application for LA IRLANDESA in 1967, it was a result of the commercial relationship between the EUTM proprietor and the Irish Dairy Board. The mark was specifically created as a result of this relationship. The Board of Appeal then considered that when the EUTM proprietor filed the application to register the contested mark, this business relationship had ended and hence, since the products sold were not supplied by the Irish Dairy Board, there was a possibility that these products were no longer of Irish origin. For example, ‘LA IRLANDESA’ was created to indicate that the butter sold under the mark came from Ireland, which, since the invalidity applicant ended the butter supply agreement in 2001, was no longer the case.
The Board of Appeal held that in accordance with case law, for it to determine bad faith within the meaning of Article 59(1)(b) EUTMR, all the relevant factors specific to the particular case existing at the time of filing must be considered. This follows the criteria in Lindt (C‑529/07 Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH, 11/06/2009), which is the land mark case of bad faith. It established that the following factors need to be considered:
- Whether the applicant knew or must have known that a third party is using an identical mark for identical or similar products capable of being confused with the sign for which registration is sought
- The applicant’s intention to prevent that third party from continuing to use that sign
- The degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.
Having made these considerations, the Board of Appeal concluded that Hijos de Moisés Rodríguez González S.A . had, at the time of filing, intended to deceive the public into believing the goods to be of Irish origin by way of taking advantage of the renown of the good quality of Irish produce. This practice would be considered to materially distort the economic behaviour of the relevant consumers by preventing them from making an efficient purchasing decision. The Board of Appeal therefore declared the mark invalid on the basis of bad faith under Article 59(1)(g) EUTMR.
This case is considered to be significant as bad faith is a concept which courts and tribunals have struggled to define. The Grand Board’s deliberation has considered and re-affirmed the objective circumstances in which bad faith can be adduced and will be useful in the interpretation of bad faith in future cases.