ACHILL | Decision 0011643 | Trademarkers LLC

ACHILL | Decision 0011643

Date Published: Oct 1, 2017

CANCELLATION No 11643C (INVALIDITY)

CaorAcla Limited, Clanwilliam Terrace, Dublin 2, Ireland (applicant).

a g a i n s t

Uaineoil Sléibhe Acla Teoranta, 5 Ceol Na Nean, Bunnacurry, F28 R9T8, Achill Island, Ireland (EUTM proprietor), represented by MacLachlan & Donaldson, 2b Clonskeagh Square, Clonskeagh Road, Dublin 14, Ireland (professional representative).

On 18/04/2017, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is partially upheld.

2. European Union trade mark No 13 435 573 is declared invalid for some of the contested goods and services, namely:

Class 29: Meat and meat products; lamb meat and lamb meat products; lamb meals and constituents of meals predominantly of lamb.

Class 43: Holidays and holiday accommodation, holiday information; restaurant services; catering services.

3. The European Union trade mark remains registered for all the remaining services, namely:

Class 41: Equestrian holidays.

Class 44: Healthcare services; health resort services; convalescent homes services; saunas, beauty salon services, sanatorium, hairdressing services; massage services; nursing services; baths for hygiene purposes and turkish baths; flower arranging; manicure services; physiotherapy.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 13 435 573, ACHILL (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 29: Meat and meat products; lamb meat and lamb meat products; lamb meals and constituents of meals predominantly of lamb.

Class 43: Equestrian holidays, holidays and holiday accommodation, holiday information; restaurant services; catering services.

The applicant invoked Article 52(1)(a) EUTMR in conjunction with Article 7(1)(b) and (c) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The Applicant argues that:

Achill is the name of a place in County Mayo on the west coast of Ireland, consisting of the geographical area that is Achill Island (the largest island off the Irish coast), Achill Beg Island, Inisbiggle Island and the Currane Peninsula. Achill, being the name of the geographical area, is also commonly used and understood to refer to “Achill Island”.

Achill is known for tourism, recreation, hospitality, cultural heritage, food, agricultural products and agriculture. The local economy relies heavily on tourism and agriculture.

Achill is a place long associated with agriculture, in particular sheep farming, lamb and lamb meat products and has been so for a very long time. The Applicant refers to a book issued in 1832, the annual “Achill Sheep Show” founded in 1986, and the “Keel show”, focused on mountain sheep and cattle, and which was held annually in Achill for many years until 1994. It also refers to “Comharchumann Forbartha Acla” a local development co-operative group which in 1973 established a lamb-fattening station on Achill to improve the economic position of local sheep farmers.

As well as domestic tourism, Achill attracts many visitors from countries in the European Union. The applicant especially highlights tourism form Germany. German tourists are attracted to this place because of the writings of the Noble Laureate winner Heinrich Böll, who lived in Achill and which is featured in some of his books.

The sign “ACHILL” is a geographical term and it is understood as such by the relevant public. The sign is therefore descriptive of the goods and services under Article 7(1)(c) EUTMR as it indicates the geographical origin of the goods and services, the place of production of the goods and the place where the services are rendered or located. The sign is likely to be used by other traders and exporters based in Ireland who wish to indicate that their goods and services originate from Achill or are located in Achill.

The sign ACHILL is in common and long-standing use in a descriptive manner by a large number of traders in different business sectors in the Achill area.

Geographically descriptive signs and indications relating to the categories of goods and services for which the EUTM is registered should not be monopolised by a single undertaking. It is in the public interest that they remain available, especially since consumers are likely to establish a connection between the goods and services and the place thus designated.

As the mark is descriptive of the goods and services it is necessarily devoid of any distinctive character under Article 7(1)(b) EUTMR with regard to those goods and services.

Furthermore, the sign “ACHILL” is devoid of any distinctive character because it does not serve to identify the goods and services for which the EUTM is registered as originating from a particular undertaking and thus to distinguish the goods and services from those of other undertakings.

In support of its observations, the applicant filed the following evidence:

Annex A: Copies of maps, reference sources, website pages and other information about Achill and showing that Achill is a well-known place name.
Annex B: Printouts from websites providing information about tourism, recreation, hospitality and agriculture in Achill.
Annex C: Printouts from websites providing information about Heinrich Böll’s stay in Achill.
Annex D: A non-exhaustive list of businesses in the Achill area using the sign “Achill” in a descriptive manner in their names or in other indications, together with representative printouts form their websites.

The EUTM proprietor argues that:

The term Achill is understood to refer to Achill Island, but not to any wider geographical area, as suggested by the Applicant.

Contrary to what the Applicant states, it is not engaged in the sourcing and supply of lamb meat and lamb meat products from Achill Island. There is only one producer of lamb and lamb meat on Achill Island and that is the EUTM proprietor of the contested mark. Since the EUTM proprietor is the owner of the only abattoir of Achill Island, the Applicant could not source lamb and lamb meat products from Achill Island.

The principal income on Achill Island is derived from tourism during a relatively short summer season. The influx of tourists and visitors in the summer is limited, and so is the number of restaurants and accommodation facilities.

Apart from (subsistence) sheep farming there is nowadays virtually no agricultural production on Achill Island. There is no business on Achill Island which is engaged in agriculture apart from the EUTM proprietor. It is true that the sheep farming has been conducted on Achill Island for a substantial number of years, but the island has never been associated with lamb meat and lamb meat products simply because prior to 1960 lamb meat was never produced on Achill Island. The agricultural shows that the Applicant refers to were attended by farmers from other parts of Ireland and did not focus on local mountain sheep and cattle. The local development co-operative group was a failure. It was established on the island in 1973 and ended by 1984.

In the past, sheep were farmed on Achill Island mainly for the production of wool and lamb meat was not eaten. Neither sheep nor sheep meat were sold on Achill Island using the name Achill as a trade mark or description until early 1960’s when Martin Calvey, the founder of company owning the disputed trade mark, decided to produce and sell lamb meat and to use the name “ACHILL” to identify that lamb meat. Sheep and lamb were and still are identified by the name “Mayo Blackface Mountain breed” and lamb meat derived from lambs reared in Ireland was always and still is generally identified as “Irish lamb”.

The Applicant’s claim that “ACHILL” will be understood as a geographical term for the goods in class 29 by the relevant public is unsupported. Achill Island has no reputation in relation to any of the activities listed by the Applicant. An examination of Annex D provided by the applicant, shows that there is some use of the word ACHILL as a trade mark; none of the businesses is using “ACHILL” as a descriptive indication for a location.

In support of its observations, the EUTM proprietor filed the following evidence:

Enclosure 1: History of the trade mark Achill
Enclosure X: Details of two Irish registrations for labels containing the word Achill.
Enclosure XI: A letter dated 25/03/2013 from the Applicant to Martin Calvey to seek his support.
Enclosure XII: Copies of letters form the Irish Patent Office withdrawing the objection raised against Mr. Calvey’s applications and copies of the publication of both applications.
Enclosure XIII: Some examples of marketing showing how the trade mark ACHILL has been used by the EUTM proprietor.

In its reply, the Applicant holds the following:

It reiterates, gives further details, and elaborates on many of the arguments made in the Statement of Grounds. It further states that:

The Applicant denies that the EUTM Proprietor has any reputation in the trade marks “ACHILL”, “ACHILL MOUNTAIN LAMB” or “ACHILL LAMB”. The EUTM proprietor has not provided any evidence regarding this alleged use and reputation. Any reputation the EUTM proprietor has is under the family name “Calvey”. The Irish trade mark registration no’s 226748, “CALVEY’S ACHILL MOUNTAIN LAMB”, and 226749, “CALVEY’S CERTIFIED ORGANIC ACHILL ISLAND LAMB” are wholly descriptive save for the term Calvey’s. All and any of the use the EUTM proprietor has made of the term “ACHILL” in relation to lamb has been as a descriptor and it has at all times been used in conjunction with the CALVEY’S trade mark.

Some of Irelands leading chefs and restaurant critics were not aware of the EUTM proprietor or his lamb supply business until the Applicant commenced its lamb supply business in 2012.

The EUTM proprietor is only one among approximately 200 active farmers in Achill, and the Applicant also processes lamb meat and lamb meat products from lambs produced by Achill farmers in the Achill area. The sign “Achill” has been used to describe and identify sheep, lamb, sheep and lamb meet emanating from Achill Island by third parties, including the Applicant, in the sale of those products throughout Ireland. None of the Applicant’s new customers in 2012 and 2013 were aware of Achill lamb and Achill mountain lamb as being the trade badge of the EUTM proprietor.

“Achill lamb” is not one of the EUTM Proprietor’s well-known trademarks and his effort to register “Achill lamb” and “Achill Mountain Lamb” as trademarks on the Irish Trade Marks Register in the year 2013 has been opposed by the Applicant.

The EUTM proprietor has failed to submit any admissible evidence that the “ACHILL” trade mark is well-known by a significant part of the public, and failed to provide information about the market share, the intensity and length of use or investment made under the trade mark “ACHILL”, and the EUIPO should not have registered this trade mark in the absence of proof of acquired distinctiveness.

The EUTM proprietor’s acknowledgment and confirmation that Achill’s principal source of income is derived from tourism is an express acknowledgment is widely known for tourism, and therefore class 43 should be invalidated. The Wikipedia page about Achill talks about it as a tourist destination and also states that “with a large sheep population, Achill lamb is a very popular meal on the island too”.

Neither the EUTM proprietor nor any of his family is involved in any of the services listed in class 44.

Those businesses which use the term “ACHILL” in their name do so to indicate that they are based and located in Achill, or trading from the Achill area only, that is, as a geographical indication.

Reference is made to the decision of the Board of Appeal regarding the trade mark CONNEMARA for goods in classes 29 and 30.

The applicant comments the EUTM proprietor’s enclosures: The comments regarding Enclosure 1 and X are more or less a summary of some of the arguments previously made; as for Enclosure XI it is evident that the Applicant and its directors were not aware of the existence of any trade mark or other intellectual property in the term “Achill Lamb” or “Achill Mountain Lamb”; the evidence in Enclosure XIII is not dated and is therefore inadmissible in its entirety.

The local governmental authority for the Achill area has furnished letters of support to the Applicant in these proceedings, and in relation to the Applicant’s related trade mark opposition proceedings in the Irish Patent Office.

In support of its observations, the applicant filed the following evidence:

Annex 1: “Achill” website pages.
Annex 2. Web search results for “ACHILL” from the www.wildatlanticway.com website.
Annex 3: Martin Calvey lamb advertisement dated 1974 and 1975.
Annex 4: Irish trade marks (TM No’s 226748 and 226749).
Annex 5: Letters from leading chefs and food critics.
Annex 6: Letters from Achill farmers.
Annex 7: Map of the Achill area – www.visitachill.com
Annex 8: Letters from Achill farmers in the Currane area.
Annex 9: CRO Printouts for “Calvey’s” business name and “Uaineoil Sléibhe Acla Teoranta”.
Annex 10: CaorAcla Letter to Irish trade marks office re invalid Irish trade marks.
Annex 11: CRO Printout for Achill Mountain Lamb Limited.
Annex 12: CRO Printout list of “Achill” business names.
Annex 13: Extracts from Wikipedia regarding Achill Island.
Annex 14: Letter from Mr. Tony Carolan of Carolan’s Butchers and Abattoir.
Annex 15: Webpage extracts from the www.wildatlanricway.com website
Annex 16: Third party advertisement for “Achill lamb” dated 1997.
Annex 17: Mayo County Council Letters (Achill’s Local Government Authority).

In its rejoinder, the EUTM Proprietor states the following:

There is no evidence to support the claim that the relevant English-speaking part of the public in EU is likely to perceive the word “ACHILL” as an indication of geographical origin of the relevant goods.

Achill Island is a place that tourists might wish to visit but there is no evidence to support the Applicant’s claim that it is a top tourist destination.

The EUTM Proprietor’s company, Uaineoil Sléibhe Acla Teoranta, was established by Mr. Calvey who used his trace marks exclusively for more than 50 years before establishing the company.

The Applicant’s denial that Mr. Calvey has a reputation under the trade marks “ACHILL”, “ACHILL MOUNTAIN LAMB” and “ACHILL LAMB” is a direct contradiction of its acknowledgement (in a letter to the EUTM Proprietor) that Mr. Calvey had “championed Achill lamb for many years”. The suggestion that the Applicant was responsible for creating a reputation and notoriety among Irish restaurants is contrary to the facts. The EUTM Proprietor owns the only abattoir on Achill Island and no one else can supply lamb meat originating on Achill Island.

The applications to register “ACHILL LAMB” and “ACHILL MOUNTAIN LAMB” as trade marks in Ireland were approved by the Controller of the Irish Patent Office following the filing of evidence of use and the submissions of arguments at a formal Hearing in the Irish Patent Office.

The evidence submitted by the EUTM Proprietor clearly establishes that it has been using the name ACHILL as a trade mark since the early 1960s, and the evidence presented to the Irish Patent Office establishes this.

As regards the Applicant’s claim that the EUTM proprietor’s Irish trade mark registrations are wholly descriptive save for the term Calvey’s is contrary to the facts. No disclaimer was imposed by the Irish Patents Office in connection with Irish trade mark no. 226748, CALVEY’S ACHILL MOUNTAIN LAMB, which was the practice in relation to descriptive indications.

Before Mr. Caley adopted the name “ACHILL” as his trade mark, Achill was entirely unknown as a geographical source of lamb meat. The EUTM Proprietor’s products are specialist artisan products which are purchased by discerning consumers, restaurateurs and hoteliers who are aware of the artisan nature of the products.

As regards the applicant’s enclosures, the EUTM Proprietor comments that: Annex 6, letters from Achill farmers, contains only one Statutory Declaration which is defective. The other statements are of no probative value. As for the EUTM application for the trade mark CONNEMARA, this was considered descriptive by the Board of Appeal as Connemara is a famous region, while AchilI Island is virtually unknown.

In support of its observations, the EUTM proprietor filed the following evidence:

A Statutory Declaration signed by Martian Calvey on behalf of the EUTM Proprietor regarding questionnaires completed and signed by sheep farmers in relation to their knowledge of sheep farming on Achill Island, and the two trade marks used by the EUTM Proprietor, and copies of those 14 signed questionnaires.

Nine Statutory Declarations from sheep farmers on Achill Island, declaring that they identify “Achill Mountain Lamb” and “Achill Lamb” with meat from Calvey’s Butchers.

A letter signed by Patrick Chambers, District Superintendent of the Livestock section of the Department of Agriculture and Food declaring that he has never known the lambs on Achill island to be described as Achill lambs.

A letter from Mayo County Council to Martina Caley, asking her to engage in a Food Tourism Network as Achill Mountain Lamb is of appeal to visitors and offers an authentic food experience of Achill.

A letter signed by Michael Dunleavy of Dunleavy Meats Ltd., declaring that he has never heard a farmer from Achill describing his lambs as Achill lambs.

A letter signed by Michael Kent, an independent agricultural consultant, declaring that he has never heard a farmer identifying his Mayo Blackface Mountain sheep or lambs as Achill sheep or Achill lamb.

Articles from newspapers from 1974, 1982, 1988, 1990, and 1997 mentioning the Achill sheep show, and one article from 2016 mentioning the Keel sheep show.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 52(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non-registrability obtain in only part of the Union.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C-332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

Descriptiveness – Article 7(1)(c) EUTMR

Under Article 7(1)(c) EUTMR, ‘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’ are not to be registered.

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(See judgment of 23/10/2003, C-191/01 P, ‘Wrigley’, paragraph 31.)

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] 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’ (judgment of 26/11/2003, T-222/02, ‘ROBOTUNITS’, paragraph 34).

The registration of geographical names as trade marks is not possible where such a geographical name is either already famous, or is known for the category of goods concerned, and is therefore associated with those goods or services in the mind of the relevant class of persons, or it is reasonable to assume that the term may, in view of the relevant public, designate the geographical origin of the category of goods and/or services concerned (judgments of 15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 51; 25/10/2005, T-379/03, Cloppenburg, EU:T:2005:373, § 38).

The Office notes that the relevant points in time in respect of which the assessment on the claimed descriptive character and lack of distinctiveness of the sign ‘ACHILL’’ must be made are both the filing date and the registration date. In other words, it is necessary to establish whether the term “ACHILL” was seen as a term designating the geographic origin of the goods concerned at the time of its filing (i.e. 06/11/2014).

The Applicant provides a great amount of material consisting mainly of print-outs from web sites and brochure material. Many of the print-outs are undated. The material that is dated usually indicates the copyright year 2015, but also the years 2011 and 2013 appear, and Appendix B23 is dated 1974.

Most of these web sites contain information about Achill Island (both factual and tourist information), present the different companies that are established on the island which have the term “Achill” in their company names, and present sheep shows taking place on Achill Island. Most of this information, even if it had been dated and in the right time frame has a rather low probative value as it in essence show some rather obvious facts. For instance, it is very common that businesses include the name of the place where they are established and/or do business.

The Applicant argues that the island is known all over Europe, specifically by German consumers. German tourism and references to Germany are mentioned in some of the web sites provided by the Applicant, but there is no persuasive arguments and material to prove that the average German consumers, or that any other consumers in the European Union, are familiar with Achill Island. Therefore, the Cancellation Division is of the opinion that the island in question is known mostly to Irish consumers. The relevant public is thus the Irish average consumer.

Achill Island is an island in County Mayo on the west coast of Ireland with a small number of year-round residents (approximately 2,500 persons). Contrary to the applicant’s assertion, the term “ACHILL”, as far as the Cancellation Division understands, only refers to the island itself and not to the surrounding mainland.

Both parties concur that Achill Island is a well-known and popular Irish tourist destination, and the Cancellation Division see no reason to doubt this.

The term “ACHILL” therefore simply indicates the destination and the location where the “holidays” and “holiday accommodation” are provided and, the subject matter of the “holiday information”. As for “restaurant services” and “catering services”, they go hand-in-hand with hotel accommodation services. Furthermore, food is for many people an important part of the general holiday experience, and tourists will often connect foods with a certain place. The mark “ACHILL” is therefore descriptive of “holidays and holiday accommodation, holiday information; restaurant services; catering services” in class 43 which are provided to the “generic” tourist.

As for “equestrian holidays” in class 43, these services are very specific and cater to a limited number of individuals. There is no clear indication or evidence to support the claim that Achill Island is known for horse riding holidays. The Cancellation Division therefore finds that “ACHILL” is not descriptive of “equestrian holidays”.

As for the services in class 44, namely “healthcare services; health resort services; convalescent homes services; saunas, beauty salon services, sanatorium, hairdressing services; massage services; nursing services; baths for hygiene purposes and turkish baths; flower arranging; manicure services; physiotherapy”, all or some of these services may very well be provided on Achill Island as they are typical services that are usually provided in any larger community. However, there is no indication/proof whatsoever that the island is either specifically known for any of those services or that it is reasonable to assume that the term may, in view of the relevant public, designate the geographical origin of these services. The Cancellation Division therefore concludes that “ACHILL” is non-descriptive in relation to all the services in class 44.

The real bone of contention between the parties is whether “ACHILL” is descriptive or not for the goods in class 29, namely “meat and meat products; lamb meat and lamb meat products; lamb meals and constituents of meals predominantly of lamb”.

Both the Applicant and the EUTM Proprietor produce Statutory Declarations and a host of other material in support of their views. The Cancellation Division has carefully studied this material and finds the following:

Ireland as a country is rife with sheep: it is known for its many sheep and for its sheep farming. There are sheep all over Ireland, and sheep farming has taken place on Achill Island for a long time as confirmed by the two parties. The EUTM Proprietor however argues that the sheep were farmed for the production of wool and not lamb meat.

As the EUTM Proprietor points out, sheep farmers and other professionals in the business define sheep by the breed, such as “blackface mountain sheep”. However, when lamb meat is sold to the average consumer, the breed is seldom or never mentioned. Geographical provenance on the other hand is oftentimes mentioned when choice foods are offered for sale.

Also, for average consumers the geographical provenance of foods has become more and more important. For instance, the consumers are aware that the feed, such as the grass and herbs in a specific place and that sheep and other livestock eat, affect the taste of the meat. Consumers may therefore choose a meat from a certain geographical place because they like that specific flavour, and other qualities that appear in the meat (fatness, leanness, tenderness, etc.), and increasingly the geographical provenance is specifically mentioned in sales and marketing.

Taking into consideration that the Irish average consumers are aware that sheep farming takes place all over Ireland, they would rightly assume that it also takes place on Achill island. Therefore, when viewing the mark ACHILL in relation to the goods in class 29, the relevant consumers will immediately understand that the goods is lamb meat from lambs reared on Achill Island, and would understand it as a term that indicates the geographical origin of the goods.

The fact that the EUTM Proprietor owns the only abattoir on Achill Island is irrelevant as the place where livestock is slaughtered is never mentioned in the sale of meat to the end consumer. Furthermore, livestock are not necessarily slaughtered locally: they may be shipped long distances for slaughter.

The EUTM Proprietor refers to its previous Irish trade mark registration no’s 226748, “CALVEY’S ACHILL MOUNTAIN LAMB”, and 226749, “CALVEY’S CERTIFIED ORGANIC ACHILL ISLAND LAMB”, both which are figurative marks.

The Office agrees with the Applicant that “Calvey’s” is the distinctive element in those marks, and that “ACHILL MOUNTAIN LAMB” and “CERTIFIED ORGANIC ACHILL ISLAND LAMB” are descriptive terms.

The EUTM Proprietor argues that no disclaimer was imposed in connection with the marks and argues that “Calvey’s” is the “house“ mark, and that “ACHILL MOUNTAIN LAMB” is his product mark. Reference is also made to the Irish registrations for the trade marks “ACHILL LAMB” and “ACHILL MOUNTAIN LAMB” in which acquired distinctiveness was shown.

It is telling that the Irish Patent Office considered the two latter marks as being descriptive or the marks would have been registered without it being necessary to provide evidence of acquired distinctiveness.

In summary, the mark “ACHILL” is therefore considered descriptive of the following goods and services:

Class 29: Meat and meat products; lamb meat and lamb meat products; lamb meals and constituents of meals predominantly of lamb.

Class 43: Holidays and holiday accommodation, holiday information; restaurant services; catering services.

Non-distinctiveness – Article 7(1)(b) EUTMR

Under Article 7(1)(b) CTMR trade marks which are devoid of any distinctive character are not to be registered.

According to case-law, the signs referred to in Article 7(1)(b) CTMR are signs which are regarded as being 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 them 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 judgment of 27/02/2002, T-79/00, ‘LITE’, paragraph 26).

As shown in the previous section the mark ACHILL is considered to be descriptive for:

Class 29: Meat and meat products; lamb meat and lamb meat products; lamb meals and constituents of meals predominantly of lamb.

Class 43: Holidays and holiday accommodation, holiday information; restaurant services; catering services.

Therefore, the mark is also devoid fof any distnctive character under Article 7(1)(b) EUTMR for those goods and services.

As the request for invalidation under Article 7(1)(c) EUTMR was only partially successful, it is subsequently necessary to consider the application for invalidity under Article 7(1)(b) EUTMR for the remaining services, namely for:

Class 43: Equestrian holidays.

In essence the Applicant argues that because the mark is descriptive of the geographical origin of the services, it is also devoid of any distinctive character for those services. However, as reasoned above, the Cancellation Division does not consider the mark descriptive in relation to the services, and it is therefore distinctive for the above mentioned services.

The Applicant did not provide any other evidence or convincing arguments which prove that the contested EUTM is devoid of distinctive character in relation to these services.

Therefore, the Applicant has failed to submit, substantiate or prove its claim that the mark is devoid of distinctive character in relation to the goods for which it is registered.

Acquired distinctiveness

The EUTM Proprietor referred to the fact that its Irish trade mark registrations for the marks “ACHILL LAMB” and “ACHILL MOUNTAIN LAMB” were accepted on evidence of acquired distinctiveness.

However, it did not invoke invoke Article 52(2) EUTMR in these proceedings and nor did it provide any evidence of acquired distinctiveness.

Therefore it is clear that the applicant did not claim and/or wished to show that the EUTM under consideration has acquired distinctiveness under Article 7(3) EUTMR.

Conclusion

In the light of the above, the Cancellation Division concludes that the application is partially successful and the European Union trade mark should be declared invalid for part of the contested goods and services, namely:

Class 29: Meat and meat products; lamb meat and lamb meat products; lamb meals and constituents of meals predominantly of lamb.

Class 43: Holidays and holiday accommodation, holiday information; restaurant services; catering services.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Liliya Yordanova

Anne-Lee Kristensen

Robert MULAC

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

ACHILL | Decision 0011643

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