CANCELLATION DIVISION
CANCELLATION No 11758 C (INVALIDITY)
The GB Foods, S.A., Plaza Europa, 42, 08902 L’Hospitalet de Llobregat, Spain
(applicant), represented by Garreta i Associats Agència de la Propietat Industrial,
S.L., Gran Via de les Corts Catalanes, 669 bis, 1º 2ª, 08013 Barcelona, Spain
(professional representative)
a g a i n s t
Nissin Food Holdings Co., Ltd., 1-1, 4-Chome, Nishinakajima, Yodogawa-Ku, Osaka,
Japan (EUTM proprietor) represented by Marks & Clerk LLP, 90 Long Acre, London
WC2E 9RA, United Kingdom (professional representative).
On 30/11/2017, the Cancellation Division takes the following
DECISION
1. The application for a declaration of invalidity is partially upheld.
2. European Union trade mark No 9 377 904 is declared invalid for some of the
contested goods, namely:
Class 30: Noodles; pasta; instant noodles; deep frozen noodles; chilled
noodles; dried noodles; and prepared meals containing [principally]
noodles.
3. The European Union trade mark remains registered for all the remaining goods,
namely:
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour
and preparations made from cereals, bread, pastry and
confectionery, ices; honey, treacle; yeast, baking powder; salt,
mustard; vinegar, sauces (condiments); spices; ice; aromatic
preparations for food; condiments; seasonings; essences for
foodstuffs [except etheric essences and essential oils], farinaceous
foods.
4. Each party bears its own costs.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431,
subject to certain transitional provisions. All the references in this decision to the
EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations
currently in force, except where expressly indicated otherwise.
Decision on Cancellation No 11758 C page:2 of 10
REASONS
The applicant filed an application for a declaration of invalidity against European Union
trade mark No 9 377 904 (figurative mark) (the EUTM). The
request is directed against all the goods covered by the EUTM, namely:
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and
preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle;
yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice;
aromatic preparations for food; condiments; seasonings; essences for foodstuffs
[except etheric essences and essential oils]; farinaceous foods; noodles; pasta; instant
noodles; deep frozen noodles; chilled noodles; dried noodles; and prepared meals
containing [principally] noodles.
The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b), (d)
and (g) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that the term ‘SOBA’ is a descriptive word, and therefore can be
considered to be non-distinctive and generic, when applied to some of the registered
goods, namely noodles; pasta; instant noodles; deep frozen noodles; chilled noodles;
dried noodles; and prepared meals containing [principally] noodles, given that this term
refers to a type of noodles. It also claims that, when the EUTM proprietor applied for a
trade mark in the United States which included this word, it waived any right to
exclusivity in respect of the word ‘SOBA’, thus recognizing that this word could not be
exclusive because of its descriptive character.
As regards the rest of the contested goods, the applicant argues that, due to its
descriptive meaning, the contested EUTM may cause confusion to the consumers.
In support of its observations, the applicant filed the following evidence:
Description of the term ‘SOBA’ in the English version of Wikipedia, printed on
07/09/2015, where it is explained that it is the Japanese name for buckwheat
and that it is synonymous with a type of thin noodle made form buckwheat flour.
It is further explained that this term is commonly used in Japan to refer to any
type of thin noodles (not only those made of buckwheat), and there is a list of
hot and cold ‘SOBA’ dishes containing thin noodles.
Definition of the term ‘SOBA’ in an English online dictionary
(http://dictionary.reference.com), where it is described as ‘flat noodles made
from buckwheat and wheat flours, used in Japanese cookery’. This document
was printed on 08/09/2015.
Blog entry in English, dated 24/03/2015, from the ‘I am food blog’, showing a
recipe for a dish containing soba as one of its main ingredients.
Decision on Cancellation No 11758 C page:3 of 10
Blog entry in English, dated 28/09/2010, from the ‘Misty Yoon’ blog, with a
recipe for a salad containing soba noodles.
Extract from the website www.japan-guide.com, printed on 08/09/2015,
explaining in English what are soba noodles and different recipes that can be
done with them.
Extract from an online bookshop, dated 07/09/2015, advertising the Spanish
version of the Lonely Planet guide of Japan, which mentions the possibility of
enjoying ‘soba in the street stalls’ of a particular region.
Print out from the website of a Spanish online store for food products
(Frescabarna), undated, which shows as one of the products on sale a package
of ‘soba noodles’.
Undated photographs showing packaging for soba noodles, which according to
their labels are imported into the EU, from two different brands. The indications
on the packages are in several EU languages.
Extract from the book ‘Cocinar los ingredients japoneses’, published in Spain in
2011, explaining in Spanish what soba is (a type of noodles), and featuring a
recipe with soba.
Extract from the book ‘Recetas básicas de Japón’, published in Spain in 2014,
with a definition in Spanish of soba as buckwheat noodles, to be eaten hot or
cold.
Extract from the book ‘Cocina Japonesa auténtica, sana y fácil’, published in
Spain in 2008, with two recipes in Spanish including soba noodles.
Extract from the book ‘cocina japonesa con sabores orientales y occidentales
con los ingredientes japoneses’, published in Spain in 2007, explaining in
Spanish what is soba (a type of noodles) and featuring several recipes with
soba.
Extract from a cooking encyclopedia, published in Spain in 2014, with a
definition in Spanish of soba (a type of Japanese noodles).
Extracts from one of the Office’s databases showing a number of national trade
marks from different Member States (France, UK, Slovenia), filed between
21/02/2002 and 08/03/2010. All these trade marks include the term ‘SOBA’,
together with other distinctive words, and are registered, inter alia, for goods in
Class 30.
Extract from the trade mark database of the USPTO, showing several
registrations of US trade marks containing the word ‘Soba’ for goods in
Class 30, one of them belonging to the EUTM proprietor. In each case, the word
‘SOBA’, or other expressions containing it, are expressly disclaimed.
The EUTM proprietor argues that the applicant has just claimed that the contested
EUTM is descriptive in respect of some of the contested goods, but has not explained
why or how it infringes Article 7(1)(d) and (g) EUTMR.
Decision on Cancellation No 11758 C page:4 of 10
As regards the alleged lack of distinctive character under Article 7(1)(b) EUTMR, the
EUTM proprietor states that the contested EUTM is the transliteration of a Japanese
word. Japanese is not an official language of the European Union and, as such, will not
generally be understood by the relevant public. In support of this argument, the EUTM
proprietor quotes the judgment of 23/10/2002, T-6/01, Matratzen, EU:T:2002:261. The
EUTM proprietor further argues that the documents filed by the applicant do not
demonstrate that ‘SOBA’ is descriptive and do not contain a clear definition of what this
word means. In any event, the applicant has not demonstrated how the word can be
descriptive for all seven different types of goods contained in the specification. The
EUTM proprietor mentions the meanings that this word could have in Serbo-Croat,
Slovene and Spanish, and submits evidence in this respect. It also attaches a previous
decision of 30/01/2003, in which it was held that the word ‘SOBA’ had no meaning in
German.
The EUTM further questions the probative value of the documents provided by the
applicant, since most of them postdate the date of filing of the contested EUTM. As
regards the books which predate the filing date, no evidence has been filed to
demonstrate the target audience or publication figures. The extracts regarding national
registrations containing the word ‘SOBA’ or the evidence related to the US trade mark
register are not relevant for the purposes of assessing the distinctiveness of an EUTM.
Finally, the EUTM proprietor points out that no issue as to the registrability of the EUTM
based on absolute grounds was raised by the Office in the course of the examination
process, and submits a copy of the letter confirming that the EUTM was accepted for
publication.
In reply, the applicant rejects the EUTM proprietor’s arguments, reiterates its own
arguments and provides the following further evidence (which, since it has been
marked by the applicant as confidential, will only be described in general terms):
Extract from the online food encyclopaedia ‘encicolpediadegastronomia.es’ with
a recipe for cold soba noodles in Spanish, inserted by a known Spanish food
critic and dated April 2007.
Copy of an article in English published in the UK newspaper ‘The Guardian’,
dated 26/07/2008, in which a Japanese cook based in London gives a recipe
using soba noodles.
Entry in English in the food blog ‘PRIYA’S’, dated 20/04/2009, with a recipe
based on soba noodles.
Copy of an article in English in the internet publication ‘Living to eat’, dated
05/01/2009, describing the meaning of soba and containing various recipes.
Entry in English in the blog of a Swedish national, dated 10/05/2009, which
mentions soba as a type of Japanese noodles.
Entry in English in the blog ‘Just Hungry’, dated 30/06/2009, showing recipes of
soba noodles and how to cook soba noodles.
The applicant adds that the fact that the EUTM proprietor recently filed a new EUTM
application for ‘NISSIN SOBA’ (copy of which is attached) shows that it is aware that
‘SOBA’ is a generic term. Furthermore, it refers to the withdrawal of a series of ‘SOBA’
Decision on Cancellation No 11758 C page:5 of 10
trade marks filed on 05/07/2015, and states that the motive for said withdrawal was
presumably their generic character.
In the rejoinder, the EUTM proprietor refutes the applicant’s arguments, reiterates its
own arguments and questions the evidentiary value of the new documents which were
filed by the applicant. It also claims that the evidence related to the other ‘SOBA’ marks
that were applied for or withdrawn is nor relevant for the present proceedings.
ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN
CONJUNCTION WITH ARTICLE 7 EUTMR
According to Article 59(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
EUTMR, 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).
As a preliminary remark, it should be mentioned that the argument of the EUTM
proprietor based on the absence of any objection during the examination process of the
contested EUTM is not well founded. The registration of a European Union trade mark
cannot give rise to a legitimate expectation for the proprietor of that mark with regard to
the result of subsequent invalidity proceedings, since the applicable rules expressly
allow for that registration to be challenged subsequently in an application for a
declaration of invalidity or a counterclaim in infringement proceedings (19/05/2010, T-
108/09, Memory, EU:T:2010:213, § 25). Otherwise, challenging the registration of an
EUTM in the context of invalidity proceedings would, where the subject-matter and the
grounds were the same, be deprived of any practical effect, even though such a
challenge is permitted under the EUTMR (22/11/2011, T-275/10, Mpay24,
EU:T:2011:683, § 18).
Non-distinctiveness – Article 7(1)(b) EUTMR
The notion of general interest underlying Article 7(1)(b) EUTMR is, manifestly,
indissociable from the essential function of a trade mark, which is to guarantee the
identity of the origin of the marked product or service to the consumer or end user by
Decision on Cancellation No 11758 C page:6 of 10
enabling him, without any possibility of confusion, to distinguish the product or service
from others which have another origin (08/05/2008, C-304/06 P, Eurohypo,
EU:C:2008:261, § 56).
For a trade mark to possess distinctive character within the meaning of Article 7(1)(b)
EUTMR, it must serve to identify the goods or services in respect of which registration
is sought as coming from a particular undertaking, and thus to distinguish those goods
or services from those of other undertakings. Words are non-distinctive or cannot
confer distinctiveness on a composite sign if they are so frequently used that they have
lost any capacity to distinguish goods and services.
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 (27/11/2003, T-348/02, Quick, EU:T:2003:318,
§ 29).
The average consumer’s level of attention is likely to vary according to the category of
goods or services in question (22/06/1999, C-342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 26).
In the present case, the goods in respect of which the contested EUTM is registered in
Class 30 are general consumer goods, and therefore it can be said that the relevant
public will consist of average consumers from the general public.
The contested mark consists of the word ‘SOBA’, the expression ‘Japanese fried
noodles’, a series of Japanese characters (which will not be understood by the average
consumer in the European Union, and will therefore be perceived as figurative
elements) and some additional figurative components (stylization of the typeface,
colours).
The argument of the applicant as regards the non-distinctiveness of the contested
EUTM for part of the contested goods, namely noodles; pasta; instant noodles; deep
frozen noodles; chilled noodles; dried noodles; and prepared meals containing
[principally] noodles, is based on the fact that ‘SOBA’ it is a generic term to designate
these goods or their main ingredient (noodles).
The evidence filed by the applicant refers mainly to the Spanish and English speaking
public. It should therefore be determined, as a first step, if it has been proved that the
meaning of the term ‘SOBA’ was understood by a significant part of the relevant
Spanish and/or English-speaking public at the time of the filing of the contested trade
mark (15/09/2010).
As regards the Spanish-speaking public, the Cancellation Division notes, in the first
place, that the word ‘SOBA’ does not appear (with any meaning related to the goods in
question) in the ‘Diccionario de la Real Academia de la Lengua Española’. This means
that it is in principle unlikely to be common knowledge that the word is understood by
the relevant Spanish-speaking public (30/06/2017, R 1985/2016-5, YAKISOBA, § 28).
The evidence filed by the applicant is not sufficient to prove that the meaning of the
term ‘SOBA’ was understood, at the time of the filing of the contested EUTM, by a
significant part of the Spanish-speaking public. Most of this evidence postdates the
date of filing of the contested EUTM, and it has been taken from specialized internet
sites, without any information regarding the actual following of these websites within
the EU. Likewise, there is no evidence regarding the circulation of the specialized
Decision on Cancellation No 11758 C page:7 of 10
Japanese cookery books where some references to this term can be found. Taken as a
whole, the evidence could at most suggest that the term ‘SOBA’ might be understood
by Spanish-speaking amateurs of Japanese gastronomy, but not by the average
Spanish-speaking consumer.
In any event, and as regards the Spanish public, the average Spanish consumer will
not understand the expression ‘Japanese fried noodles’. For the Spanish-speaking
public this expression would therefore be fanciful and distinctive.
However, and as regards the English-speaking part of the relevant public, the evidence
filed by the applicant on the meaning of ‘SOBA’ is more convincing, since it also
includes, for instance, a reference to the term in a large-circulation UK newspaper,
which predates the date of the filing of the contested EUTM, as well as an extract from
a well-known online encyclopaedia and an entry from an online English dictionary.
Even if the last two documents postdate the date of filing of the contested EUTM, it
could be assumed that they reflect the use of the term in this language during a certain
period of time before the corresponding entry was made.
Moreover it should be taken into account, as it has been previously mentioned, that the
restriction of the factual basis of the examination by the Office in inter partes
proceedings in accordance with Article 95 EUTMR does not preclude it from taking into
consideration, in addition to the facts expressly put forward by the parties, facts which
are well known, that is, which are likely to be known by anyone or which may be learnt
from generally accessible sources (22/06/2004, T-185/02, Picaro, EU:T:2004:189).
In this context, the Cancellation Division notes that the Oxford English Dictionary (entry
first published in 1986) defines ‘soba’ as ‘a type of noodle that is made from buckwheat
and is a popular Japanese food’ (http://www.oed.com/view/Entry/ 183699).
The fact that the word was added to a well-respected general dictionary, such as the
OED, twenty four years before the filing of the contested EUTM reinforces the rest of
the evidence filed by the applicant and enables the Cancellation Division to consider
that it is common knowledge that, at the time when the application for the contested
EUTM was filed, the term ‘SOBA’ was already being widely used among the English-
speaking public to refer to a type of noodles.
The arguments of the EUTM proprietor regarding the Japanese origin of the word
‘SOBA’ and the fact that it will not be understood in some Member States are not well
founded, given that, if there is convincing evidence to show that a particular term in a
language that is not an official language of the European Union is understood by a
significant part of the target public in at least part of the European Union, that term may
also be refused under Article 7(2) EUTMR (13/09/2012, T 72/11, Espetec,
EU:T:2012:424, § 35 36). The case-law quoted by the EUTM proprietor (Matratzen) is
not applicable in this case, since it refers to a case where the meaning of the term in
question was not understood by the relevant public.
In these circumstances, it must be concluded that, at the time of filing of the contested
EUTM, the term ‘SOBA’ was widely used by the English-speaking public to describe all
the goods indicated by the applicant in connection with this ground (namely noodles;
pasta; instant noodles; deep frozen noodles; chilled noodles; dried noodles; and
prepared meals containing [principally] noodles) or their main ingredient, and would
therefore not have been perceived by the English-speaking public as an indication of
their commercial origin. The addition of the expression ‘Japanese fried noodles’, which
is clearly descriptive in English for noodles, and of some purely decorative figurative
elements (colours and typeface, as well as the Japanese characters, which are in a
Decision on Cancellation No 11758 C page:8 of 10
small size and will probably be interpreted as a mere allusion to the Asiatic origin of the
product) is not sufficient for the contested EUTM to be considered to possess the
necessary minimum level of distinctiveness for the goods in question. Consequently,
the invalidity application must be upheld as regards the aforementioned goods, for
which it is considered to be devoid of any distinctive character within the meaning of
Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) EUTMR.
The applicant did not submit any argument or evidence as regards the non-distinctive
character of the EUTM for any of the remaining contested goods, namely coffee, tea,
cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from
cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder;
salt, mustard; vinegar, sauces (condiments); spices; ice; aromatic preparations for
food; condiments; seasonings; essences for foodstuffs [except etheric essences and
essential oils]; farinaceous foods. In the absence of any explanation of why the word
‘SOBA’ should be considered non-distinctive for the remaining goods, the application
must be rejected for them, to the extent it is based on Article 7(1)(b) EUTMR.
The Cancellation Division will therefore now examine the other grounds on which the
application as regards the remaining contested goods to which Article 7(1)(b) EUTMR
does not apply.
Customary character – Article 7(1)(d) EUTMR
The applicant claims that the contested EUTM consists exclusively of signs or
indications which have become customary in the current language or in the bona fide
and established practices of the trade, within the meaning of Article 7(1)(d) EUTMR.
The assessment of the alleged customary use of a sign must also be carried out in
relation to the goods or services in respect of which the trade mark is registered and in
relation to the perception of the sign by the relevant public (16/03/2006, T-322/03,
Weisse Seiten, EU:T:2006:87, § 49). In addition, actual customary use, not mere
potential use as in the case of descriptive character, must be established (see, by
analogy, 21/04/2004, C-64/02 P, OHIM / Erpo Möbelwerk, EU:C:2004:645, § 29). In
other terms, a finding that a sign has become a customary designation should be
corroborated by evidence of actual customary use of the sign, unless this fact is likely
to be known by anyone or may be learnt from generally accessible sources
(22/06/2006, C-25/05 P, Storck / OHIM, EU:C:2006:422, § 50-51). Furthermore,
customary use must be proven not to be sporadic but must be associated with the sign
by the majority of those who are concerned by such use (Weisse Seiten, loc. cit., § 33).
In the present case, the applicant gave no indication of the way in which the contested
sign has become customary in relation to any of the remaining goods in Class 30.
Therefore, this ground for invalidity must be rejected as regards the remaining goods.
Deceptiveness – Article 7(1)(g) EUTMR
Finally, and specifically in relation to the remaining contested goods, the applicant
contends that the EUTM is likely to deceive the public.
According to the combined provisions of Article 59(1)(a) and Article 7(1)(g) EUTMR,
trade marks shall not be registered, and if registered shall be declared invalid, if they
are ‘of such a nature as to deceive the public, for instance as to the nature, quality or
geographical origin of the goods or services’. The concept of ‘deceit’ presupposes the
existence of actual deceit or a sufficiently serious risk that the consumer will be
Decision on Cancellation No 11758 C page:9 of 10
deceived by a ‘sufficiently specific designation’ of potential characteristics of the goods
and services covered by the trade mark. Only where the targeted consumer is made to
believe that the goods and services possess certain characteristics, which they do not
in fact possess, will he be deceived by the trade mark (24/09/2008, T-248/05,
I.T.@Manpower, EU:T:2008:396, § 64-65).
Again, the applicant has not given any indication of the way in which the contested sign
could deceive the relevant public in relation to the remaining contested goods in
Class 30, namely coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour
and preparations made from cereals, bread, pastry and confectionery, ices; honey,
treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice;
aromatic preparations for food; condiments; seasonings; essences for foodstuffs
[except etheric essences and essential oils]; farinaceous foods. The term ‘SOBA’,
which refers to a type of noodles, or the expression ‘Japanese fried noodles’ do not
refer to any characteristic of these other goods and, consequently, the EUTM cannot in
principle deceive the targeted consumers.
Therefore, this ground for invalidity must also be rejected as regards the remaining
goods.
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, namely: noodles; pasta; instant noodles; deep frozen
noodles; chilled noodles; dried noodles; and prepared meals containing [principally]
noodles in Class 30.
The application is not successful as regards the remaining goods.
COSTS
According to Article 109(1) EUTMR, the losing party in cancellation proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3) 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 some of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has to
bear its own costs.
Decision on Cancellation No 11758 C page:10 of 10
The Cancellation Division
Carmen SÁNCHEZ
PALOMARES
José Antonio GARRIDO
OTAOLA
Pierluigi M. VILLANI
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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.