In 2015, a man from Birmingham successfully registered CHEESE as a class 31 European Union Trade Mark (Grains and agricultural, horticultural and forestry products not included in other classes; seeds). To the general public, this trade mark (TM) may suggest ties to the edible kind of cheese but those in the marijuana industry may know this actually refers to a type of marijuana seed. During cancellation proceedings, the concept of the ‘relevant industry’ was pivotal in deciding the fate of CHEESE as a TM as the question was asked who is the relevant public, those in the marijuana or the public at large.
Trade Marks Under the Trade Marks Regulation
The European Union Intellectual Property Office (EUIPO) defines a TM as an indication of origin. It is how a company or individual symbolises themselves, allowing consumers to identify their goods and distinguish them from competitors. In 2016, two Spanish companies from the marijuana industry, opposed the CHEESE mark and applied to the EUIPO to start cancellation proceedings.
The applicants’ basis for cancellation included reliance on Article 7(1)(c) of the Trade Mark Regulation 2017/1001 (EUTMR) which allows the registration of a TM to be refused when it is descriptive by nature. Other arguments put forward included Article 7(1)(b) (a TM devoid of distinctive character) and Article 7(1)(d) (a TM which exclusively uses language/practice customary to a specific trade). The provisions in Article 7(1) are a list of absolute grounds for the refusal of registration, or in this case, in conjunction with Article 59(1)(a), the invalidation of an existing TM.
The application stated that CHEESE is known by those in the ‘relevant industry’ as a variety of marijuana seed. The ‘relevant public’ would make an immediate connection from the word CHEESE to the goods in question (the seeds). This would suggest the TM is descriptive in nature and non-compliant with Article 7(1)(c).
If the relevant industry was deemed to be the public in general, they may not have the relevant knowledge to link cheese to a marijuana seed. However, if the marijuana industry is deemed to be the relevant public, there may well be a link to the seeds in their mind. Essentially, the success of the application for cancellation hinged on what is deemed to be the ‘relevant industry’.
This concept of relevance is best demonstrated by the successful registration of ‘Screw You’ (R 495/2005-G). This TM related to sex products, which had to be considered in line with Article 7(1)(f) EUTMR (contrary to public policy and acceptable principles of morality). It was suggested that if the relevant consumer was the ‘general consumer’, the term would be contrary to public policy/morality as the majority of English-speaking EU citizens may find the term objectionable. However, it was deemed the relevant consumer was actually the ‘general consumer of sex products’, therefore the term was not contrary to public policy/morality. The EUIPO reported: ‘a person entering a sex shop is unlikely to be offended by a TM containing crude, sexually charged language’.
In the 2016 application for cancellation against CHEESE, it was put forward that in the ‘relevant industry’ of marijuana manufacturers, retailers and consumers, the TM is known as an existing variety of cannabis seed. Therefore, would be descriptive by nature and falls under Article 7(1)(c). A swathe of evidence produced by the applicants included printouts from websites selling such a seed, plus entries from Urban Dictionary referring to ‘CHEESE’ as a seed which were uploaded back in 2008 and 2010. This evidence was used to prove CHEESE was a well-known seed before the registration of the TM, demonstrating the relevant industry’s connection between the term CHEESE and seed product.
Following the initial application for cancellation, the EUTM proprietor responded with his observations to the evidence put forward. Further correspondence between the parties occurred, but no new evidence was entered by the proprietor, demonstrating the a between the TM held and himself. In August 2017, the Cancellation Division declared the TM invalid.
The connection held by the relevant industry between the TM and seed was deemed stronger than any connection made between the TM and proprietor himself. Therefore, it was held that to the relevant industry, the CHEESE mark does not constitute an indication of origin but is in fact descriptive of the seeded product . Article 7(1)(c) was applied successfully and the TM invalidated. The regulations state once it is clear one of the grounds for refusal applies, it is no longer necessary to consider any other. Article 7(1)(b) and (d) were not considered, as the TM was already in breach of the law.
Following the declaration of invalidity in August 2017, the TM proprietor filed an appeal in October 2017 (R 2333/2017-1) requesting the decision be set aside. Responding in March 2018, the cancellation applicants requested that the appeal be dismissed. The appeal was not successful. The First Board of Appeal held that the Cancellation Division had successfully identified the relevant industry and applied it, as well as Article 7(1)(c), successfully.
In summary, the TM has been stripped from the former proprietor, as the word CHEESE (to the relevant industry) ‘is not seen as the indication of origin but as the name of [a] specific product’.