CANCELLATION DIVISION · The applicant s argue that Arsenie Boca is the name of a well -known monk (Orthodox Christian reverend Hieromonk) and servant of the Romanian Orthodox Church

OPERATIONS DEPARTMENTCancellation Division

C406B

Alicante, 28/10/2019

DianaTalpos Diana Talpos comuna Viile Satu Mare ,florilor nr 5 447360 satu mare RO

Notification of a decision to the EUTM proprietor/IR holder

Your reference:Invalidity number: 000030831 CContested trade mark: 015773997

BOCA PARINTELE

Please find attached the decision terminating the proceedings referred to above. The decision was delivered on 28/10/2019.

Please note that decisions of the Cancellation Division are not signed by the officials responsible but only indicate their full names and bear a printed seal of the Office in accordance with Article 94(2) EUTMR.

Nicole CLARKE

Enclosures (excluding the cover letter): 15 pages

Avenida de Europa, 4 • E - 03008 • Alicante, SpainTel. +34 965139100 • www.euipo.europa.eu

CANCELLATION DIVISION

CANCELLATION No 30 831 C (INVALIDITY)

Manastirea Prislop, Str. Silvasu de Sus nr. 129, Loc. Hateg, Jud. Hunedoara, Hateg, Romania and Episcopia Ortodoxa Romana a Devei si Hunedoarei, Episcopia Ortodoxa Romana a Devei si Hunedoarei, Romania (applicants), represented by Turcu & Turcu Law Office, 62, SF. Elefterie st., 050526 Bucharest, Romania (professional representative)

a g a i n s t Diana Talpos, comuna Viile Satu Mare ,florilor nr 5, 447360 satu mare, Romania (EUTM proprietor). On 28/10/2019, the Cancellation Division takes the following

DECISION 1. The application for a declaration of invalidity is rejected in its entirety. 2. The applicants bear the costs.

REASONS The applicants filed an application for a declaration of invalidity against European Union trade mark No 15773997 ‘BOCA PARINTELE’ (word mark), (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely: Class 16: Printed educational materials; Pictures; Lithographs; Graphic

representations; Sketches; Wrapping paper; Plastic wrap; Prints. Class 20: Works of art of wood, wax, plaster or plastic. Class 32: Beer; Waters [beverages]; Non-alcoholic flavored carbonated beverages. Class 33: White wine; Red wine. Class 34: Matchboxes. Class 36: Charitable fund raising; Political fund-raising services; Health insurance;

Insurance services relating to property. The applicants invoked Article 59(1)(a) EUTMR in conjunction with Articles 7(1)(a), (b), (c), (f), (g) and (i) EUTMR and also invoke bad faith under Article 59(1)(b) EUTMR. SUMMARY OF THE PARTIES’ ARGUMENTS The applicants argue that Arsenie Boca is the name of a well-known monk (Orthodox Christian reverend Hieromonk) and servant of the Romanian Orthodox Church who lived in the 20th century. The applicants state that Arsenie Boca became famous as a theologian, writer, graphic artist (mural painter) and a spiritual guide who is very much

Decision on Cancellation No 30 831 C page:2 of 15

in demand among believers. His grave has become a place of pilgrimage attended annually by between 30,000-40,000 pilgrims to honour his memory and pray for him. The applicants also state that hundreds of thousands of believers petitioned the church to initiate the process of canonization of Fr. Boca as a saint of the church and this procedure is currently being undertaken by the Metropolis of Transylvania by the Synod. The applicants state that the proprietor has no relation to Fr. Arsenie Boca and is not authorised to use or register the name by the Romanian Orthodox church and that this use harms the reputation and the religious name of the deceased and defiles the image of a religious symbol that has acquired wide recognition in the Romanian Orthodox community. They argue that the EUTM was registered contrary to public policy or accepted principles of morality for all the Orthodox Christian communities in Romania and other areas of the EU, such as in Spain, Italy, France, Great Britain etc. The applicants state that religious values and symbols are part of the public policy and principles of morality in any society and Fr. Boca is the most prominent figure in the Romanian Orthodox community and his name must receive reverence and respect. Furthermore, they argue that the use of his name as a trade mark on secular goods amounts to an intolerable affront to practising Orthodox Christians. The applicants point out that in Romania religious defamation or causing religious discord or public offense to religion is forbidden by law. It also states that Romania is among the 10 most religious countries in the world and is the fourth ranked among countries with the highest Orthodox population, being home to 7.2% of the total number of Orthodox Christians with 89% of Romanian citizens being Orthodox. They state that another 5 million Romanians live in other EU countries and for all Romanians the degradation of a religious symbol and its conversion into an indicator of commercial origin is a grievous affront to the freedom of religion and amounts to harmful conduct forbidden under the laws of the Member States and the principals that govern jurisprudence of the European Court of Human Rights. The applicants explain that the word ‘PARINTELE’ means ‘father’ in Romanian and is used by priests to indicate a renowned Reverend father and ‘BOCA’ is the surname of the famous monk. Therefore, the use of this sign represents an unlawful act, harmful to public policy and the accepted principals of morality and an affront to a symbol of a much revered in the Orthodox community. The applicants also put forward further arguments that the sign is descriptive, that it lacks distinctiveness, that it cannot serve as a trade mark as it does not distinguish the commercial origin of the goods, that it is use of a religious symbol, it is deceptive and misleading and that it was filed in bad faith. Therefore, it requests the EUTM to be refused in its entirety. In support of its observations, the applicants filed the following evidence:

Appendix 1: An Extract from Wikipedia concerning Arsenie Boca.

Appendix 2: A printout in English from https:/dexonline.ro concerning the word ‘părinte’ in Romanian which translates to ‘parent’ or ‘father’ in English and which states that it can refer, inter alia, to clergy as a name of reverence.


Appendix 3: Printouts containing registration details of the EUTM

No. 15 760 382 ‘ARSENIE’, and of EUTM No. 16 722 712 and of

RCD 3 564 582-0001 .

Appendix 4: Extract from www.banatulazi.ro which contains an article entitled ‘Kick-off for Souvenir Traders at Prislop Monastery! Who claims the brand Arsenie Boca’ dated 14/12/2017 and an article in an online Romanian publication on www.monitorfg.ro entitled ‘Monitorul de Fagaras’ dated 14/03/2018, an extract from https://stirileprotv.ro containing an article in English entitled ‘The owner of the trademark ‘Arsenie Boca’ filed the complaint. Trader: ‘You can not compare your parent to a brand’ dated 11/05/2018.

Appendix 5: Examples of goods bearing Arsenie Boca’s name and image.

Appendix 6: Letters from the owner of the rights mentioned in Appendix 3 above to the Arsenie Boca Foundation and the Bucharest Archdiocese, to order them to stop using the name ‘Boca Parintele’ and ‘Arsenie’ and his image on its goods and withdraw said goods from the market as it owns the rights to that sign, in both English and Romanian.

Appendix 7: A notification of a decision from the Public Prosecution Office of the Hateg County Court in Case No. 234/P/2018 in which it dismisses the criminal proceedings for putting into circulation a product bearing a mark identical or similar to a registered trade mark for identical or similar products for the ‘notorious trademark’ in relation to Fr. Arsenie Boca and his image. The decision is provided in both Romanian and English.

Appendix 8 - Witness Statement from the Fr. Arsenie Boca Christian Foundation in English and Romanian. It describes how the EUTM proprietor contacted them to say that it could not sell their goods as she was the owner of the ‘Fr. Arsenie Boca’ trade mark. Also a Witness Statement from Parvu Georgeta of the Arsenie Boca Hieromonk Association with details of the phone message and text with Diana Talpos in Romanian and English.

Appendix 9: Translation of the article dated 31/05/2018 published in the ‘Fagaras Monitor’ concerning what Romanians think of Fr. Arsenie Boca, that he is the ‘saint of Transylvania’. An article printed on 05/11/2018 on www.digi24.ro entitled ‘Who owns the rights to the image of Arsenie Boca in Romania’. An article dated 16/05/2018 entitled ‘‘Descenders’ at Prislop monastery. The owner of the trade mark ‘Arsenie Boca’ visiting the merchants of religious objects’ on www.banatulazi.ro. And another article in Romanian from www.news.ro dated 11/05/2018.

Appendix 10: Google search results for the term ‘boca parintele’.

Appendix 11: Excerpt from Wikipedia entitled ‘Religion in Romania’ which states that according to the 2011 census 86.45% of the Romanian population declares themselves Orthodox.

The EUTM proprietor submitted observations in Romanian without any translation into English.


On 05/04/2019 the Office informed the EUTM proprietor that these observations would not be taken into consideration as they were not translated into English within one month in accordance with Article 146(9) EUTMR. 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 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 fled, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of fling (23/04/2010, C-332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43). The distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T-348/02, Quick, EU:T:2003:318, § 29). In the present case, the contested EUTM was filed on 21/08/2016 and registered on 02/12/2016. It consists of the verbal sign ‘BOCA PARINTELE’ for the goods and services listed above in the reasons section. Therefore, the relevant point in time in respect of which the assessment must be made is the fling date, namely 21/08/2016. The relevant public for these goods and services is mainly the public at large who are reasonably observant and circumspect, but can also be directed at the professional public with special knowledge (for example political fund-raising services, in Class 36). the attentiveness of the relevant public will range from low (for matchboxes), average (e.g. for beer) to high (e.g. for political fund-raising services). Moreover, in view of the arguments of the applicants and the submitted evidence, the relevant public is the Romanian consumers in the European Union. Therefore, in light of the foregoing, it is appropriate to define the relevant public as both, the Romanian public at large and the Romanian professional public in the EU. Conformity with Article 4 EUTMR – Article 59(1)(a) EUTMR in conjunction with Article 7(1)(a) EUTMR Article 4 EUTMR states the following:


An EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of: (a) distinguishing the goods or services of one undertaking from those of other

undertakings; and

(b) being represented on the Register of European Union trade marks (‘the Register’), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

Article 7(1)(a) CTMR provides that signs which do not conform to Article 4 CTMR shall not be registered. The applicants argue that the sign is the name of the famous Romanian monk Fr. Arsenie Boca which has been heavily promoted by the church. Therefore, they argue that relevant consumer will not believe that the goods or services bearing the mark are manufactured, sold or provided under the control of the trade mark proprietor and will associate them with a different entity. As such, it does not distinguish the goods of the undertakings. However, the Cancellation Division cannot agree with this premise. The EUTM consists of a verbal sign which is represented on the register and which is capable of distinguishing the goods or services of one undertaking from another. The fact that it could be perceived as the name of a famous figure in Romania does not exclude the fact that the sign can serve to distinguish the commercial origin of the goods. Therefore, this ground is rejected. Descriptiveness – Article 59(1)(a) EUTMR in conjunction with 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. Article 7(2) EUTMR states that paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community. It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C-329/02 P, SAT/2, EU:C:2004:532, § 25). 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.


(23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 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’ (26/11/2003, T-222/02, Robotunits, EU:T:2003:315, § 34). For a trade mark to be refused registration under Article 7(1)(c) EUTMR,

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.

(23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

Furthermore, It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of Article 7(1)(c) CTMR does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(See judgment of 12/02/2004, C-363/99, ‘Koninklijke KPN Nederland’, paragraph 102.) The public interest underlying Article 7(1)(c) EUTMR is that exclusive rights should not exist for purely descriptive terms which other traders might wish to use as well. Article 7(1)(c) EUTMR accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see judgment of 12/06/2006, C-173/04 P, ‘Deutsche SiSi-Werke v OHIM’, paragraph 62). This ground for refusal cannot be overcome by showing that the EUTM proprietor is the only person who produces, or is capable of producing, the goods or render the services in question. Moreover, the descriptive character of a trade mark must be assessed both in relation to the goods and services in respect for which the trade mark is registered and in relation to the perception of the relevant public (see judgment of 20/03/2002, T-356/00, ‘CARCARD’, paragraph 25). A sign must be refused if it is descriptive in any of the official languages of the European Union, regardless of the size or population of the respective country. The relevant date for this assessment is the date of filing of the application for registration (see judgment of 03/06/2009, T-189/07, ‘FLUGBÖRSE’, paragraph 18). The contested EUTM was filed on 21/08/2016. The applicants argue that the EUTM is made up of the name of a famous deceased monk in Romania who is about to be canonised as a saint in the Romanian Orthodox


church. They argue that ‘PARINTELE’ will be understood by the Romanian public as referring to the Romanian word ‘Părintele’ which can, inter alia, refer to the honorific title used for priests and monks (Father) and that ‘BOCA’ is the universally known surname of the well known figure ‘Arsenie Boca’. They argue that the Romanian consumers will immediately perceive a link between the sign and the goods and services which could overlap with goods like holy statues, holy water, wine used for communion etc. and understand that they are strongly connected to the Orthodox monk Boca as these goods have been sold on a large scale on the relevant market under his name. The Cancellation Division notes that marks that are contrary to the provision of Article 7(1)(c) EUTMR 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 services. The contested EUTM does not designate any of these characteristics. This ground does not cover the possibility of a likelihood of confusion (which is covered in Article 8(1)(b) EUTMR) but whether the EUTM is descriptive of the goods and services. The applicants have not explained how the name of the Romanian Orthodox monk Arsenie Boca describes the characteristics of the contested goods and services. In fact, there has been no evidence submitted to show that the Romanian public would actually recognise the misspelling of ‘părintele’ to mean father, or that in combination with ‘Boca’ it refers to Arsenie Boca. For the most part the evidence refers to Arsenie Boca and not ‘BOCA PARINTELE’. The applicants did not provide evidence that the mark was descriptive within the meaning of Article 7(1)(c) EUTMR at the time of filing in respect of the goods specified, or at all. Therefore, the application, as based on this ground is rejected. Non-distinctiveness – Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) EUTMR The distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T-348/02, Quick, EU:T:2003:318, § 29). According to case-law, the signs referred to in Article 7(1)(b) EUTMR 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 (27/02/2002, T-79/00, Lite, EU:T:2002:42, § 26). The applicants arguments regarding lack of distinctiveness of the EUTM are the same as those mentioned above under the examination of Article 7(1)(c) EUTMR and they are based on the assumption that the contested sign is descriptive and that the relevant consumer will believe that the goods and services originate from Fr. Arsenie Boca. However, as has been seen above, descriptiveness of the contested sign for the goods and services mentioned above cannot be concluded. Therefore, no lack of distinctiveness of the contested EUTM can be affirmed on account of its alleged descriptiveness as regards those goods and services. The applicants also argue that the EUTM could never be viewed as a trade mark but would believe that the use of the sign is exclusively for the purpose of commemorating and honouring the memory of


this famous figure. However, the applicants have failed to substantiate this argument with relevant evidence, such as opinion surveys or other evidence to show the actual perception of the relevant public of these goods. In fact, there has been no evidence submitted to show that the Romanian public would actually recognise the misspelling of ‘părintele’ to mean father, or that in combination with ‘Boca’ it refers to Arsenie Boca. For the most part the evidence refers to Arsenie Boca. Either way, the sign is not descriptive of the goods and is capable of distinguishing the goods and services of one enterprise from those of another. Consequently, the application must also be rejected insofar as it was based on Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) EUTMR. Public policy or accepted principles of morality, Article 7(1)(f) EUTMR

Article 7(1)(f) EUTMR excludes from registration trade marks that are contrary to public policy or to accepted principles of morality. The rationale of Article 7(1)(f) EUTMR is to preclude trade marks from registration where granting a monopoly would contravene the state of law or would be perceived by the relevant public as going directly against the basic moral norms of society. The Office considers that ‘public policy’ and ‘accepted principles of morality’ are two different concepts, which often overlap. The wording of Article 7(1)(f) EUTMR is very broad and allows a great deal of room for interpretation. This Article clearly imposes a duty on the Office to exercise a degree of moral judgment in assessing the suitability of signs to be granted trade mark protection. It can be extremely difficult to ascertain when a sign crosses the boundary from being merely irreverent or distasteful to being seriously abusive and likely to cause deep offence. In this regard, signs which severely offend the religious sensitivities of a substantial group of the population are also best kept off the register, if not for moral reasons, at least for reasons of public policy, namely the risk of causing public disorder (see decision of 6 July 2006, R 495/2005-G, ‘SCREW YOU’, para. 14 et ss). Signs likely to be perceived by the relevant public as being contrary to public policy or to accepted principles of morality are not the same in all Member States, inter alia for linguistic, historic, social and cultural reasons (see judgment of 20 September 2011, case T-232/10, ‘soviet coat of arms’, para. 32). The assessment of whether a sign is contrary to public policy or to accepted principles of morality must be carried out with reference to the perception of that sign, when being used as a trade mark, by the relevant public within the European Union or part of the Union. That part may, in some circumstances, be comprised of a single Member State (see judgment of 20 September 2011, case T-232/10, ‘soviet coat of arms’, para. 50). In the present case, the applicants argue that Romanian citizens that will find the EUTM as contrary to public policy or morality. They further state that the registration of the contested mark is contrary to the national Law No. 489/2006 in Romania in particular Article 13(2) of which states: ‘Any forms, means, acts or activities aiming at religious defamation and the creation of religious discord, as well as any public offense to religion, are forbidden in Romania’. The applicants point out that the vast majority of Romanians identify as members of the Orthodox Church and this is confirmed by the Wikipedia extract which shows approximately 85% of Romanians claim to be Orthodox Christians. It is therefore, the


perception of European consumers, or a substantial part thereof, in this case, Romanians living within the EU that is relevant in the case at hands.

The relevant point in time for assessing the whether the contested mark was in breach of Article 7(1)(f) EUTMR is the date of filing of the EUTM. In other words, it is necessary to establish whether or not ‘BOCA PARINTELE’ was contrary to public policy or accepted standards of morality in relation to the contested goods and services on 21/08/2016.

The EUTM consists of the term ‘BOCA PARINTELE’. The word ‘PARINTELE’ is a misspelling of the Romanian word ‘părintele’ which means ‘father’ or ‘parent’, as verified by the dictionary extracts submitted by the applicants. These extracts also show that ‘father’ is used by the church to refer to clergy with reverence. The name ‘BOCA’ in Romania is a surname and is also the name of the famous monk referred to above. The joining of the two words indicates that it refers to a monk or priest by the name of ‘BOCA’. However, none of the evidence refers to the time of filing of the EUTM but, for the most part, is dated in 2018. As mentioned evidence dated after the filing date may be taken into consideration where relevant. The evidence consists of a Wikipedia extract outlining details of Arsenie Boca’s life and some articles from the press in regards to Arsenie Boca dated in 2018. It is unclear if these are religious or mainstream press articles and how widely distributed or viewed they were. There is no concrete evidence to show that, at the time of filing, the relevant consumer would recognise the sign ‘BOCA PARINTELE’ as referring to Arsenie Boca or whether, if this were the case, they would be offended by the use of this indication in relation to the contested goods and services. Again, most of the evidence speaks of Arsenie Boca or Fr. Arsenie Boca but not to ‘BOCA PARINTELE’. If understood as Father Boca it could both refer to the famous figure or any other priest or monk with the surname Boca. The letters from the EUTM proprietor to the applicants, the goods marked with the monks name and image, the witness statements and court decisions do not prove that the relevant consumer would find the EUTM offensive or against accepted principles of morality or public policy. Many of the arguments have not been backed up by concrete independent evidence such as opinion polls, surveys etc. showing that the relevant public would understand the EUTM as referring to this famous figure or that the use of the EUTM would be offensive to them or against public policy. Therefore, the Cancellation Division does not have any concrete independent evidence dated at the time of filing or thereafter which shows that the use of the trade mark ‘BOCA PARINTELE’ would contravene Article 7(1)(f) EUTMR and this ground must also be rejected. Deceptiveness – Article 59(1)(a) in conjunction with Article 7(1)(g) EUTMR Pursuant to Article 7(1)(g) EUTMR, trade marks which 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 shall not be registered. According to case-law, this ground for invalidity presupposes the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (04/03/1999, C-87/97, Cambozola, EU:C:1999:115, § 41). Thus, a mere theoretical possibility that the public may be mistaken does not itself fall within an objection pursuant to Article 7(1)(g) EUTMR (decision of 17/04/2007, R 1102/2005-4, “SMARTSAUNA”, § 32).


In addition, Article 7(1)(g) EUTMR ‘implies a sufficiently specific designation of potential characteristic 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, § 65). When assessing whether a given trade mark is deceptive or not, account should be taken of market reality, meaning the way the goods are normally distributed and purchased, as well as of consumption habits and the perception of the relevant public. The relevant public is normally composed of reasonably well-informed, observant and circumspect persons. The average consumer is usually reasonably attentive, and should not be regarded as easily vulnerable to deception. The applicants argue that the contested mark could deceive the public because:

- The EUTM will be associated by the Romanian’s to the origin of the name, the Romanian Orthodox Church, the churches and monasteries.

- The EUTM cannot indicate the commercial origin of the goods but just the commemoration of Fr. Arsenie Boca.

- The contested EUTM was filed without the consent of the church. - Therefore, the EUTM is likely to mislead the public on the origin of the goods

and services who expect to only find the name on products originating from the Romanian Orthodox church.

- The consumer will believe that the goods and services bearing the EUTM were manufactured or sold by or with the consent of the Orthodox church.

The Cancellation Division notes, firstly, that the applicants have not demonstrated that at the time of filing, or thereafter, the consumers would identify the term ‘BOCA PARINTELE’ as referring to Fr. Arsenie Boca. Indeed most of the evidence submitted, as already mentioned, refers to Arsenie Boca or Arsenie or părintele Arsenie Boca. Moreover, the evidence has failed to show that the sign cannot indicate the commercial origin of the goods and services. The applicants argue that the consumer in Romania will understand the sign to come from the Orthodox Church, however there is no evidence to back up this assertion or to show the actual knowledge or opinions of the end consumers. The applicants make reference to laws in Romania which provide the exclusive right of religious organizations to manufacture religious items and activities involving the production or sale of goods and which would confer the exclusive right to ‘BOCA PARINTELE’ to the Romanian Orthodox Church. However, they have not produced copies of this law to back up their assertions. In any case, this is not a matter that forms any part of the Cancellation Division’s considerations in relation to Article 7(1)(g) EUTMR. If such a legal remedy exists, it is for the applicants to seek it through the Romanian courts. Indeed even if the consumers were to see the sign as referring to the famous monk it would be a reference to him and not the Romanian Orthodox Church who have not shown that they own intellectual property rights to his name. The evidence shows some pictures of goods with the image of Arsenie Boca and/or the name Părintele Arsenie Boca or Arsenie Boca but it did not show sales figures or any evidence to show that the vast sales of goods or the provision of services by the Romanian Orthodox church would lead consumers to believe that the commercial origin of the goods would have to be the Church and do not show the sign ‘BOCA PARINTELE’ either. Secondly, under this ground it must be shown that the trade mark would deceive the public, for instance as to the nature, quality or geographical origin of the goods or services. This is not the case here as the sign does not refer to the nature, quality or geographical origin of the goods or services.


In the present case, even if it is assumed that ‘BOCA PARINTELE’ will be perceived (which may not be the case, and which has not been proven by the applicant) only as a reference to the famous monk, the consumers would not have any specific expectation about the contested goods or services. The applicants have not demonstrated that the contested EUTM is misleading in relation to any of the contested goods and services. The fact that some of the contested goods are used in religious services does not mean that the public will be misled into thinking that the famous (deceased) monk has any connection with the manufacture and sale of the contested goods or the provision of any of the contested services, nor does it provide any information about the quality or nature or geographical origin of the contested goods and services. It follows that the contested trade mark does not lead consumers to any clear expectation as regards any characteristic of the contested goods and services. Consequently, there is no reason to surmise that consumers are likely to be deceived into thinking that the contested goods and services possess any nature, quality or geographical origin that they do not in fact possess. As seen above, it is a requirement of the application for invalidity to be successful under Article 59(1)(a) EUTMR in conjunction with Article 7(1)(g) EUTMR that the contested trade mark is liable to deceive the public. Since this has not been established, the application must also be rejected in relation to Article 59(1)(a) EUTMR in conjunction with Article 7(1)(g) EUTMR.

Article 7(1)(i) EUTMR Under Article 7(1)(i) EUTMR, trade marks shall not be registered which include badges, emblems or escutcheons other than those covered by Article 6ter Paris Convention and which are of particular public interest, unless the consent of the competent authority to their registration has been given. The applicants argue that as the Romanian Orthodox Church has exclusive rights to manufacture and sell religious items under Romanian law they are the only ones who can use religious symbols on goods. However, again, the evidence is lacking in regards to actually showing that the Romanian consumers would recognise ‘BOCA PARINTELE’ as referring to the famous monk. Moreover, the contested goods and services do not specifically state that they are religious objects that would fall under the law. Indeed the argument that only the Church can sell religious items appears to be contradicted in the applicants’ own arguments in relation to bad faith when they argue that not only the Church but also the other third party merchants who sold the merchandise with Arsenie Boca’s image on it were told by the EUTM proprietor to cease selling the goods. Furthermore, the applicants have failed to show that they own a badge, emblem or escutcheon for the term ‘BOCA PARINTELE’ without the image of the famous figure or his first name Arsenie. The evidence is insufficient to prove that the contested trade mark would fall within the scope of Article 7(1)(i) EUTMR and it is noted that the contested mark does not include any badge, emblem or escutcheon. Consequently, the application must be rejected also with regard to Article 59(1)(a) EUTMR in conjunction with Article 7(1)(i) EUTMR.


BAD FAITH – ARTICLE 59(1)(b) EUTMR General principles Article 59(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark. There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 60). Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 37). The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven. Outline of the relevant facts The applicants argue that in Romania the chains of stores owned by the Church, as well as other merchants in the vicinity of monasteries or places of pilgrimage, are selling items which contain the religious symbol ‘Fr. Boca’. It is used on books, souvenirs, icons and other religious items. The activities predate the filing of the EUTM by a long time. They argue that the EUTM proprietor misappropriated the name of the revered monk and then demanded that the applicants cease from using the name and image of Fr. Arsenie Boca. In particular, the EUTM proprietor filed criminal complaints against the Roman Orthodox Church and the third parties, individuals and companies who sold objects bearing his name, and asked for the detention and confiscation of all religious items bearing this image and name. The EUTM proprietor also sent text messages and made telephone calls to ask the applicants to cease from using the name and image, while the proprietor has not yet engaged in commercial activities under the contested sign. The applicants argue that the filing of the EUTM was done to extort money from the applicants and to engage in parasitic exploitation of the renown of Fr. Boca and take advantage of his name. Therefore they claim that the EUTM must be invalidated. They also argue that legal scholars have unanimously stated that ‘the use of the name of a third party as a trade mark is generally a suspect choice which often serves as a vehicle for fraud’. The applicants claim that the actions of the EUTM proprietor show that she is acting in bad faith. Assessment of bad faith One situation which may give rise to bad faith is when a commercial entity has obtained some degree of legal protection by virtue of the use of a sign on the market,


which a competitor subsequently registers with the intention of competing unfairly with the original user of the sign. In such instances, the Court of Justice of the European Union (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 48, 53) has stated that the following factors in particular should be taken into consideration: (a) the fact that the EUTM proprietor knows or must know that a third party is using

an identical or similar sign for an identical or similar product capable of being confused with the contested EUTM;

(b) the applicant’s intention of preventing that third party from continuing to use such

a sign; (c) the degree of legal protection enjoyed by the third party’s sign and by the sign for

which registration is sought; and (d) whether the EUTM proprietor in filing the contested EUTM was in pursuit of a

legitimate objective. The abovementioned are only examples drawn from a number of factors which can be taken into account in order to determine whether or not the applicant was acting in bad faith when filing the application; account may also be taken of other factors (14/02/2012, T-33/11, Bigab, EU:T:2012:77, § 20-21; 21/03/2012, T-227/09, FS, EU:T:2012:138, § 36). The fact that the EUTM proprietor knew of the invalidity applicant’s intention to use an identical or similar trade mark for identical or similar goods is not sufficient in itself to assume bad faith. If the use of a sign is merely planned, the only arguments which can apply are those which apply in cases of actual prior use, which has not been fulfilled in this case (23/06/2010, R 993/2009-1, SLIME, § 19). The applicants have not shown that they are the owners of an earlier trade mark for the sign ‘BOCA PARINTELE’. They have argued that the Church has exclusive rights to use the sign on religious objects but it has not substantiated this claim by providing the law. Moreover, their own arguments seem to contradict this position as they also claim that other third party merchants are selling goods with Arsenie Boca’s name and/or image on them near monasteries. The applicants have not submitted proof that they were using the sign ‘BOCA PARINTELE’ prior to the filing of the EUTM in a commercial sense. The mere pictures of some goods containing Arsenie Boca’s image or name (in no case as Boca Parintele) do not show prior commercial use. Moreover, most of the documents are dated two years after the filing date of the EUTM and cannot prove a fact that must be established at the time of filing. What has been established is that there is a deceased monk who is much loved and respected in Romania who was called Arsenie Boca or Părintele Arsenie Boca. However, the applicants have failed to prove that they owned prior rights to this name or any intellectual property rights to the sign ‘BOCA PARINTELE’. The fact that the EUTM proprietor registered a sign for a name is not a de facto sign that they were acting in bad faith, which must be proven by the applicants. The evidence is lacking in this regard. The applicants have failed, based on the facts, to establish even a prima facie presumption of bad faith that needs rebuttal by the EUTM proprietor. The fact that the EUTM proprietor requested the Orthodox Church and other third party merchants to cease from using the sign does not automatically show bad faith, it merely shows that she was protecting her trade mark rights to the sign. The


applicants have submitted many different arguments, but have failed to back up those arguments with concrete evidence to prove these claims and to substantiate their rights to the sign. However, the Cancellation Division cannot act on the basis of suppositions or unproven arguments; all claims must be fully substantiated. The applicants have not submitted any evidence to show that at the time of filing of the contested EUTM, the EUTM proprietor was aware of or must have been aware of any use by the invalidity applicants of an identical or similar sign for identical or similar goods and services for which there could be a likelihood of confusion. The applicants rely on a number of judgments in support of its arguments which will be discussed in light of the present application. The applicants firstly rely on the judgment 11/06/2009, C 529/07, Lindt Goldhase, EU:C:2009:361 in that the applicant knows or must have known that a third party is using in at least one Member State, an identical or similar sign for identical or similar products which is capable of being confused with the sign for which registration is sought, and the applicant’s intention is to prevent that third party from continuing to use its sign. However, as mentioned above, the applicants have not substantiated their claim and shown that the EUTM proprietor was aware of the existence or use of an alleged earlier Romanian sign and therefore, it has not been proven that the EUTM proprietor was aware or must have known of this right, and thus cannot have had any intention to prevent a third part from using a sign that it was not aware of. Therefore, the present application and the judgment in Lindt cited above must be distinguished. The applicants also rely on the judgment of 08/05/2014, T 327/12, Simca, EU:T:2014:289 which deal with ‘historical’ trade marks which were well known. The Cancellation Division again considers that the evidence submitted by the applicants is manifestly insufficient to prove that they own rights to a historical trade mark which is well known. Finally, the applicants also rely on the judgment 11/09/2007, C 17/06, Céline, EU:C:2007:497 to argue that the reputation of the earlier sign would have been known by the EUTM proprietor which shows bad faith. However, the applicants did not prove any knowledge of the alleged earlier right on the behalf of the EUTM proprietor. Moreover, it did not prove that the sign ‘BOCA PARINTELE’ has gained a reputation. The Cancellation Division therefore concludes that the applicants have failed to prove that the EUTM proprietor knew, or must have known, of the use of the alleged earlier Romanian sign owned by the applicants. They have failed to prove the dishonest intention of the EUTM proprietor at the time of filing of the EUTM. The applicants have not proven, by submitting evidence in this regard and not simply assertions, that the EUTM proprietor was aware of the existence of the alleged earlier sign and filed the EUTM in bad faith. Conclusion In the light of the above, the Cancellation Division concludes that the application for invalidity is totally rejected and the European Union trade mark remains valid and registered for all the contested goods and services.


COSTS According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings. According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein. In the present case the EUTM proprietor did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore it did not incur representation costs.

The Cancellation Division

Rhys MORGAN Nicole CLARKE Richard BIANCHI 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.

Documents

CANCELLATION DIVISION · The applicant s argue that Arsenie Boca is the name of a well -known monk (Orthodox Christian reverend Hieromonk) and servant of the Romanian Orthodox Church