After this the proprietor tried to argue that the trademark has become established, but the court did not find any evidence to support the claim and also dismissed the infringement claim (decision 376/15 on 17 June 2016).
Background
CPR has been using the word "HANGOVER" as a pizza name since 1996. According to the company, it has 12 franchised restaurants all over Finland. Between 2005 and 2014 it has sold approximately 200 000 "HANGOVER" pizzas. According to CPR's website, the pizza contains spicy salsa sauce, mozzarella, salami, crispy bacon, pickled cucumber and jalapeños.
CPR was not happy that some of its competitors were using names "Hangover" and "Hangover Express" for their pizzas. In 2015, CPR launched trademark infringement proceedings against the competitors.
The competitors filed a counterclaim, asserting that the plaintiff’s trademark registration shall be declared invalid pursuant to Article 7(1)(b-d) and Article 52(1)(b) or it shall be declared to be revoked pursuant to Article 51(1)(b) of the Community trademark Regulation No 207/2009.
The Market Court
First, the court assessed the invalidity claim (decision 375/16, issued on 17 June 2016).
According to Article 51(1)(a) of the Regulation:
The competitors argued that the EUTM has been registered contrary to Article 7(1)(b-d). According to Article 7(1)(b-d) of the Regulation:
According to Article 7(2) of the Regulation, paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.
The court referred to the case-law of the Court of Justice (CJ) and the General Court (GC):
The court stated that the word "hangover" ("krapula" in Finnish) refers to the condition following an abundant use of alcoholic beverages. Neither of the parties argued that the word would have some other generally known meanings.
The court considered that the relevant public, average consumers, consists of English speaking audience who understands the meaning of the word. The court stated that the Finnish consumers are part of that audience.
The competitors claimed that, inter alia, the EUTM HANGOVER designates the kind or at least one of the intended purposes of the goods [Article 7(1)(c)]. According to the companies, the relevant public understands pizza as a typical hangover food and hangover remedy.
The competitors provided also evidence of Google search results for a word "krapularuoka" ("hangover food" in English). Also a survey carried out by a Finnish newspaper in 2011 revealed that 33 percent of the 18 000 respondents think that pizza is the best hangover food. The competitors provided also evidence of several online discussion board and blog posts that are praising pizza as a hangover food or provide different recipes named, inter alia, "Hangover-pizza" or "Krapulapizza". Furthermore, the competitors referred to an interview (dated April 2013) with an executive from an online pizza ordering service. According to this executive, pizza is a hangover remedy for Finns and most orders occur immediately after holidays and on Sundays.
The court referred again to CJ decision C-191/01 P Wrigley where CJ ruled that a sign must be refused if at least one of its possible meanings designates a characteristic of the goods or services concerned.
Therefore, the court stated that the mark HANGOVER has been descriptive for the goods already at the time of the registration and is thus contrary to Article 7(1)(c) of the Regulation. The mark is also devoid of any distinctive character with regard to the same goods and therefore also contrary to Article 7(1)(b) of the Regulation.
The decision was not unanimous. One judge wrote a dissenting opinion. According to this judge, a hangover or eating pizza while having a hangover cannot be regarded as designating the characteristics of pizzas. The judge stated that, inter alia, pizza is just one of the salty and greasy foods that the people who are suffering from a hangover might find tempting. The judge concluded that the connection between the mark HANGOVER and pizzas is so vague that the EUTM HANGOVER does not go beyond the acceptable limits of suggestion. The mark is not devoid of any distinctive character either. The judge also dismissed the other invoked grounds for invalidation and revocation.
CPR also referred to its physical menus from the year 1996 and 2002 and menus that have been available on its website in 2003, 2009 and 2014. The Hangover pizza has been mentioned in all those menus.
CPR referred also to four different magazine or newspaper articles (dated 2006, 2007 and 2008) in which the Hangover pizza is mentioned.
However, besides the sales figures, the company has not, according to the court, provided any evidence regarding the market share, the size of the investments made by the undertaking in promoting the mark or how reputed the mark is among the appropriate business or consumer circles in Finland.
The court dismissed the infringement claim.
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| There is nothing a good pizza can't cure! Image courtesy of jarmoluk at Pixabay.com |
The Market Court
First, the court assessed the invalidity claim (decision 375/16, issued on 17 June 2016).
According to Article 51(1)(a) of the Regulation:
1. A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings:
a) where the Community trade mark has been registered contrary to the provisions of Article 7.
The competitors argued that the EUTM has been registered contrary to Article 7(1)(b-d). According to Article 7(1)(b-d) of the Regulation:
1. The following shall not be registered:
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or 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;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.
According to Article 7(2) of the Regulation, paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.
The court referred to the case-law of the Court of Justice (CJ) and the General Court (GC):
The Article 7(1)(c) prevents the signs or indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim in the public interest, which requires that such signs or indications may be freely used by all. [See Joined Cases C-108/97, C-109/97 Windsurfing Chiemsee, para 25 and T-348/02 Quick, para 27.]
Furthermore the signs referred to by Article 7(1)(c) are signs regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the product or service to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition.[See T-219/00 Ellos, para 28.]
The signs and indications referred to in Article 7(1)(c) 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. [See T-19/04 Metso Paper Automation, para 24 and C-383/99 P Procter & Gamble, para 39.]
It follows that, for a sign to be caught by the prohibition set out in that provision, there must be 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 the goods and services in question or one of their characteristics. [See T-19/04 Metso Paper Automation, para 25.]
In order for OHIM to refuse to register a trade mark under Article 7(1)(c), it is not necessary that the signs and indications composing the mark that are referred to in that article 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 in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned. [See C-191/01 P Wrigley, para 32.]
The distinctiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign has been requested and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those products or services. [See T-348/02 Quick, para 29.]
In that regard, although it is clear from Article 7(1)(c) of Regulation that each of the grounds for refusal listed in that provision is independent of the others and calls for separate examination, there is a clear overlap between the scope of the grounds for refusal set out in subparagraphs (b), (c) and (d) of Article 7(1). In particular, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(c). [See C-265/00 Campina Melkunie, paras 18-19, C-363/99 Koninklijke KPN Nederland, paras 67 and 86 and T-322/03 Telefon & Buch, para 111,]
The court stated that the word "hangover" ("krapula" in Finnish) refers to the condition following an abundant use of alcoholic beverages. Neither of the parties argued that the word would have some other generally known meanings.
The court considered that the relevant public, average consumers, consists of English speaking audience who understands the meaning of the word. The court stated that the Finnish consumers are part of that audience.
The competitors claimed that, inter alia, the EUTM HANGOVER designates the kind or at least one of the intended purposes of the goods [Article 7(1)(c)]. According to the companies, the relevant public understands pizza as a typical hangover food and hangover remedy.
The competitors provided also evidence of Google search results for a word "krapularuoka" ("hangover food" in English). Also a survey carried out by a Finnish newspaper in 2011 revealed that 33 percent of the 18 000 respondents think that pizza is the best hangover food. The competitors provided also evidence of several online discussion board and blog posts that are praising pizza as a hangover food or provide different recipes named, inter alia, "Hangover-pizza" or "Krapulapizza". Furthermore, the competitors referred to an interview (dated April 2013) with an executive from an online pizza ordering service. According to this executive, pizza is a hangover remedy for Finns and most orders occur immediately after holidays and on Sundays.
According to the court, the relevant Finnish public understands that the word "krapularuoka" refers to a food that people are eating, inter alia, as a remedy to ease the condition they have after an abundant use of alcoholic beverages. The court stated that, according to the relevant public, pizza is one of, if not the most, common hangover foods. The court continued and stated that this understanding has existed already before the registration of the EUTM HANGOVER.
The court referred again to CJ decision C-191/01 P Wrigley where CJ ruled that a sign must be refused if at least one of its possible meanings designates a characteristic of the goods or services concerned.
Therefore, the court stated that the mark HANGOVER has been descriptive for the goods already at the time of the registration and is thus contrary to Article 7(1)(c) of the Regulation. The mark is also devoid of any distinctive character with regard to the same goods and therefore also contrary to Article 7(1)(b) of the Regulation.
Since the request was found successful under Article 7(1)(b-c) of the Regulation it was not necessary to examine whether the additional invoked grounds for invalidation and revocation would apply.
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CPR still argued that the mark has been established through use. According to section 2 paragraph 1 of the Finnish Trademarks Act (7/1964), exclusive rights in a trademark may be acquired, even without registration, after the mark has become established. According to section 2 paragraph 3 of the Act, a trade symbol shall be considered established if it has become generally known in the appropriate business or consumer circles in Finland as a symbol specific to its proprietor's goods.
The court assessed the establishment and a possible infringement in a decision 376/15, issued on 17 June 2016.
The chief executive officer (CEO) of CPR stated that the company has sold the "Hangover" pizzas in its restaurants since 1996. The company has 12 franchised restaurants all over Finland. According to the CEO, the company is selling approximately 100 000 - 200 000 "Hangover" pizzas per year. [This is contradicting the numbers CPR used in the claim. In the claim the company mentioned that it has sold, between the years 2005 and 2014, altogether 200 000 "Hangover" pizzas. The other option is that there is a typo in the decision.]
So the EUTM HANGOVER was declared invalid pursuant to Article 7(1)(c).
The court assessed the establishment and a possible infringement in a decision 376/15, issued on 17 June 2016.
The chief executive officer (CEO) of CPR stated that the company has sold the "Hangover" pizzas in its restaurants since 1996. The company has 12 franchised restaurants all over Finland. According to the CEO, the company is selling approximately 100 000 - 200 000 "Hangover" pizzas per year. [This is contradicting the numbers CPR used in the claim. In the claim the company mentioned that it has sold, between the years 2005 and 2014, altogether 200 000 "Hangover" pizzas. The other option is that there is a typo in the decision.]
A witness G has told the court that he/she has known one of the franchised restaurants and its "Hangover" pizzas since the end of 1990s.
CPR also referred to its physical menus from the year 1996 and 2002 and menus that have been available on its website in 2003, 2009 and 2014. The Hangover pizza has been mentioned in all those menus.
CPR referred also to four different magazine or newspaper articles (dated 2006, 2007 and 2008) in which the Hangover pizza is mentioned.
The court stated that the company has proved how it has sold the pizza since 1996, how the pizza has been one of its most popular products and how the amount of franchised restaurants has grown during the years.
The court continued and stated that one of the referred articles does not even mention the trademark HANGOVER or a pizza named Hangover. The other three articles mention the name but the company has not provided any information of the distribution figures. Furthermore, the content of the articles is quite insignificant. The court was not able to draw any conclusions regarding the reputation of the mark.
Therefore, the trademark has not become established.
The court dismissed the infringement claim.
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