“BIO-INSECT SHOCKER” Decision of the General Court (T-86/19)

If you have entomophobia, that is, a fear of insects that makes you anxious even when you hear their names, let’s conduct you away from this article now and invite you to read an article about flowers later on.

Nowadays, the increase in consumer demands for natural, organic and ecological products due to both environmental pollution and changing nutritional needs has accelerated the producers’ efforts in this direction. Hence, producers, who can add value to their products in this respect, present their product to the consumers by creating their trademarks with the abbreviations such as “bio”, “eco”, “organic” etc. However, if the content of the presented product is controversial in this respect, the registrability of such trademarks also becomes controversial due to the possibility that they may mislead the consumers. There are also ongoing discussions in Turkey that such trademarks might be considered deceptive, and the registrability of these trademarks has become questionable.

A recent decision of the General Court of the European Union Court of Justice might shed some light on the ongoing discussions both in Turkey and the other countries.

Let’s begin with the summary of the case first:

An application was filed on November 26, 2015 to register the word mark BIO-INSECT SHOCKER with the European Union Intellectual Property Office (EUIPO).

The application included the following goods:

Class 1: “Biocidal reparations for use in manufacture; chemical preparations for use in biocide production; chemical additives for insecticides”;

Class 5: “Disinfectants; preparations for destroying vermin; parasiticides; bacteriological preparations for medical or veterinary use; nutritional supplements; medicated sprays; antibacterial sprays; anti-inflammatory sprays; insecticides; insect attractants; insect repellent sprays; insect repellents; insecticidal preparations; insect growth regulators; wipes impregnated with insect repellents; flea powders; flea sprays; flea collars; anti-flea preparations; flea collars for animals; flea powders for animals; biocides; repellent preparations to keep animals away; veterinary products; veterinary diagnostic reagents; veterinary vaccines; food supplements for veterinary purposes; hygienic preparations for veterinary use ”;

Class 31: “Live animals; fresh fruits and vegetables; malt; drinks for animals; feedstuff.”

Below you can see the actual use form of the mark:

This application filed with EUIPO was registered for all the applied goods on March 10, 2016.

Subsequently, the invalidation of the said trademark was requested on the grounds that it lacked distinctive character, that it was descriptive, against public order and misleading. The dispute was ultimately finalized by the decision of the General Court of the European Union Court of Justice No. T – 86/19 dated May 13, 2020.

I will try to relay the outline and the justifications for the decision in the rest of this essay, which can be seen in French from the following link:

http://curia.europa.eu/juris/document/document.jsf;jsessionid=69062DB51AD8CD1D7D724 348EE1E7BFD?text=&docid=226461&pageIndex=0&doclang=FR&mode=lst&dir=&occ=first& part=1&cid=10750508

SolNova AG submitted a counter view on May 12, 2016, against registration of the trademark, citing articles 7 (1) (b), (c), (f) and (g) of Regulation No. 207/2009. However, these comments were not taken into account by EUIPO as they were submitted after registration.

SolNova AG then filed a request for invalidity of the trademark on July 25, 2016, again on the same grounds. The request for invalidity included all the goods covered by the trademark.

EUIPO Cancellation Division Decision:

The EUIPO Cancellation Division rejected the request for invalidity on December 20, 2017. As a ground of rejection, it was determined that the trademark whose invalidity was requested was sufficiently distinctive and not descriptive in terms of the goods the trademark covered. Likewise, according to EUIPO, the term “shocker” was not a term that directly described the relevant products and that it had a distinctive characteristic. In addition, it was decided that the trademark was not against public order or misleading in accordance with Articles 7 (1) (f) and 7 (1) (g) of the Regulation.

Board of Appeal’s Decision Process:

SolNova filed an appeal against the decision of the EUIPO Cancellation Division and the appeal was reviewed by the EUIPO Board of Appeal.

i) The Board of Appeal rejected the request for invalidity in terms of claims of “descriptiveness”:

– First of all, the Board of Appeal considered that the level of attention of the relevant consumers was average to high considering the variety of goods, and that the relevant public was partly composed of the general public and specialists and partly exclusively of experts. At the same time, the Board emphasized that since the trademark consisted of English words, the relevant consumer audience should be composed of English speakers.

– Secondly, it was noted that some of the goods covered by the trademark were related to insecticides or insecticide products, while others were not. In fact, SolNova AG failed to set out pleas or arguments in favor of the descriptive character of the trademark for these products.

– Thirdly, it was stated that the English term “bio insect shocker” did not directly describe the properties of “insecticides” or products associated with it. However, the Board accepted that the contested mark was a term that may imply and may evoke such products/product features. It was added that ultimately its meaning would rather simply describe “an ecological product to combat insects by bringing them into shock” and that the consumer would have to make an extra effort to make sense of it all. In this context, it was emphasized that the English expression “shocker” only meant “something which shocks” and that it was different from “to kill” or “to repel”.

– Fourthly, the Board did not accept the claims about the widespread use of the term “bio insect shocker” for the relevant goods. The fact that most of the evidence provided by SolNova AG was dated after the date of the trademark application was particularly effective in this conclusion.

ii) The Board of Appeal also rejected the request for invalidity, which claimed that the trademark “was devoid of distinctive character”, based on the above mentioned grounds

iii) The Board of Appeal also rejected the request for invalidity, which claimed that the “trademark was contrary to public order”:

The reason for this rejection is the fact that SolNova AG could not prove use of the trademark in violation of the Regulation No. 528/2012 of May 22, 2012 on the market and the use of biocidal products of the European Parliament and Council at the time of application.

iv) The Board of Appeal rejected the request for invalidity which claimed “misleading” use:

As Solnova AG failed to prove that the trademark violated the aforementioned Regulation, The Board considered that the trademark could not be qualified as misleading under Article 7 (1) (g) and that a non-misleading use thereof was also possible.

Solnova AG filed a lawsuit against the decision of the EUIPO Board of Appeal’s rejection of the invalidation request and the lawsuit was finalized by the General Court of the Court of Justice with the decision numbered T-86/19 dated May 13, 2020.

The General Court upheld the decision of the EUIPO Board of Appeal on the following grounds:

The trademark whose invalidity is requested:

i) is not devoid of distinctive character,

ii) is not descriptive,

iii) is not against public order.

In this context, the General Court made a decision in line with the Board of Appeal on the above-mentioned issues and came to the conclusion that the Board did not make any evaluation errors in this regard.

The court also established that the meaning of the term “SHOCKER” was referring to something ‘shocking’ and not to killing or repelling. For this reason, the word “SHOCKER” could not be directly associated with insect repellent products and at the same time did not directly evoke the goods subject to the request for invalidity or their characteristics to the consumer.

This assessment also reminds us that in an invalidity claim, the evidence regarding the distinctive character of a trademark should be evaluated as of the date of application of the trademark subject to the request. Since, in this case, the evidence presented by the invalidity applicant was found insufficient to prove that the word “shocking” was a general use for insect repellent products at the time of the application of the trademark in question.

Nevertheless, the General Court partially reversed the decision of the Board of Appeal on the grounds that the trademark subject to the request for invalidity was deceptive.

Unlike the Board of Appeal, the General Court decided that, although it was considered that non-deceptive use of the trademark was also possible; there was a risk of deceptiveness when the subject was evaluated in terms of biocidal products which are produced for destroying, repelling or rendering harmless, preventing actions of or otherwise combating in any way insects and which contain one or more active substances for this purpose. 

Thus, the presence of a term such as “bio” on the biocidal product has been deemed sufficient to pose a serious risk of misleading the consumer within the scope of the case law.

The Court considered that the word “bio” today has acquired a meaning that can create positive connotations. Although it may be perceived differently depending on the product offered, it has been considered that the word “bio” generally refers to respect for the environment, use of natural materials, and even ecological production processes. It should not be forgotten that the main function of a trademark is to guarantee the actual source of the relevant goods or services to the consumer or end user.

As a conclusion; according to the General Court, even if there was a possibility of nondeceptive use of the trademark in this case, this would still not be sufficient to reach the conclusion that the trademark has no deceptive character. For this reason, the trademark, for which invalidity was requested for all goods, was found to be deceptive for the following goods, which are defined as biocidal products included in Class 1 and Class 5, and the trademark was decided to be partially invalidated for the specified goods:

Class 1: “Biocidal reparations for use in manufacture; chemical preparations for use in biocide production; chemical additives for insecticides”;

Class 5: “Disinfectants; preparations for destroying vermin; parasiticides; bacteriological preparations for medical or veterinary use; medicated sprays; antibacterial sprays; insecticides; insect attractants; insect repellent sprays; insect repellents; insecticidal preparations; insect growth regulators; wipes impregnated with insect repellents; flea powders; flea sprays; flea collars; anti-flea preparations; flea collars for animals; flea powders for animals; biocides; repellent preparations to keep animals away; veterinary vaccines; hygienic preparations for veterinary use ”;

The goods excluded from the scope of the invalidation by the court are as follows:

Class 5: “Food supplements for medical use; anti-inflammatory sprays; veterinary products; veterinary diagnostic reagents; food supplements for veterinary purposes.”

Class 31: “Live animals; fresh fruits and vegetables; malt; drinks for animals; feedstuff.”

Conclusion:

As mentioned at the beginning of this article, the discussions on whether or not such trademarks are deceptive and their registrability are also ongoing in Turkey, and it seems inevitable that they will increase.

Due to the increasing need for natural, ecological and organic products, the perception of the consumers for such abbreviations included by trademarks is stronger than before; hence, products with such abbreviations have become their priority choice. Therefore, in our opinion, the decision of the General Court is a sound decision and will also shed some light on similar cases in Turkey.