Judgments nº T-687/16 of Tribunal General de la Unión Europea, November 30, 2017

• Resolution Date: November 30, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-687/16

In Case T-687/16,

Koton Mağazacilik Tekstil Sanayi ve Ticaret AŞ, established in Istanbul (Turkey), represented by J. Güell Serra and E. Stoyanov Edissonov, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Joaquín Nadal Esteban, residing in Alcobendas (Spain), represented by J. Donoso Romero, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 14 June 2016 (Case R 1779/2015-2), relating to invalidity proceedings between Koton Mağazacilik Tekstil Sanayi ve Ticaret and Mr Nadal Esteban,

THE GENERAL COURT (Second Chamber),

composed of M. Prek, President, E. Buttigieg (Rapporteur) and B. Berke, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 23 September 2016,

having regard to the response of EUIPO lodged at the Court Registry on 14 December 2016,

having regard to the response of the intervener lodged at the Court Registry on 12 December 2016,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 25 April 2011, the intervener, Mr Nadal Esteban, lodged an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p 1)).

2 Registration as a mark was sought for the following figurative sign:

3 The services in respect of which registration was sought are, inter alia, in Classes 35 and 41 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

- Class 35: ‘Advertising; business management; business administration; office functions’;

- Class 39: ‘Transport; packaging and storage of goods; travel arrangement’.

4 The trade mark application was published in Community Trade Marks Bulletin 2011/099 of 26 May 2011.

5 On 26 August 2011, the applicant, Koton Mağazacilik Tekstil Sanayi ve Ticaret AŞ, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the mark applied for in respect of all the services referred to in paragraph 3 above.

6 The opposition was based on the following earlier rights:

- the earlier Maltese figurative marks registered under numbers 46666 and 46667, reproduced below:

- international registration No 777048, designating Benelux, Bulgaria, the Czech Republic, Denmark, Germany, Estonia, Greece, Ireland, Spain, France, Italy, Cyprus, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden and the United Kingdom, of the earlier figurative mark reproduced below:

7 The ground relied on in support of the opposition was that specified in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8 On 31 October 2013, the Opposition Division upheld in part the action in Case B 1 896 680. It found that there was a likelihood of confusion between the marks at issue in so far as they designated services in Class 35.

9 On 23 June 2014, the Fourth Board of Appeal of EUIPO dismissed the appeal, in Case R 2608/2013-4, and upheld the Opposition Division’s decision of 31 October 2013.

10 On 5 November 2014, the contested mark was registered under No 9917436 for the services in Class 39 referred to in paragraph 3 above.

11 On 5 December 2014, the applicant filed an application for a declaration that that mark was invalid. The ground for invalidity relied on in support of that application was based on the absolute ground for invalidity, referred to in Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001), relating to the bad faith of the intervener when he filed the application for registration of the contested mark.

12 By decision of 25 August 2015, the Cancellation Division rejected the application for a declaration of invalidity in its entirety. It found that, in the absence in particular of any indication as to the intervener’s dishonest intention, the applicant had failed to prove that the intervener had acted in bad faith when filing the trade mark application.

13 On 4 September 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Cancellation Division.

14 By decision of 14 June 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. It took the view that, even if it were established that the contested signs display an undeniable degree of similarity and that the intervener had knowledge of the applicant’s earlier marks, especially since there was a business relationship between the parties in 2004, the intervener had clearly not displayed bad faith when filing the application for registration of the contested mark with respect to marks which cover dissimilar goods and services.

Forms of order sought

15 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to declare the registration of the contested mark invalid;

- order EUIPO and the intervener to pay the costs.

16 EUIPO contends that the Court should:

- dismiss the application;

- order the applicant to pay the costs.

17 The intervener contends that the Court should:

- reject all the requests of the applicant;

- order the applicant to pay the costs of the proceedings

Law

18 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 52(1)(b) of Regulation No 207/2009.

19 In the first place, the applicant submits that the Board of Appeal was wrong to find, in paragraph 27 of the contested decision, that the goods or services covered by the marks at issue were required to be identical or similar for the purposes of applying Article 52(1)(b) of Regulation No 207/2009, whereas neither that regulation nor the case-law has laid down such a condition. In that context, the Board of Appeal incorrectly observed that ‘the coincidence in the legal protection enjoyed by the marks’ is a condition sine qua non for the successful application of the absolute ground for invalidity set out in Article 52(1)(b) of Regulation No 207/2009.

20 In the applicant’s submission, to allow registration of a former business partner’s mark solely because the goods or services covered by the marks in question are dissimilar would be contrary to the case-law that the existence of bad faith must be the subject of an overall assessment taking into account all the factors relevant to the particular case.

21 The applicant further contends that the Board of Appeal was wrong to place the absolute ground for invalidity, referred to in Article 52(1)(b) of Regulation No 207/2009, on the same footing as the relative ground for invalidity, referred to in Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1) of Regulation No 207/2009, since those grounds require different conditions. In the applicant’s submission, the only relative ground for invalidity which could be placed on the same footing as the absolute ground for invalidity referred to above is that, referred to in Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001), relating to earlier marks enjoying a reputation, which does not require that the goods or services at issue be similar or identical.

22 In the second place, the applicant submits that, in any event, the Board of Appeal was wrong to find that the marks at issue are protected only for dissimilar goods and services. The Board of Appeal should have taken into account all the marks referred to in the application for a declaration of invalidity, including the applicant’s earlier Turkish, Ukrainian and Moroccan figurative marks, which allegedly cover the services of the contested mark. To that end, it suffices that the applicant for a declaration of invalidity has an ‘unregistered right’ in which he has a legitimate right of protection.

23 In the third place, in the applicant’s submission, the Board of Appeal misapplied Article 52(1)(b) of Regulation No 207/2009, in so far as the existence of bad faith does not require that the marks at issue enjoy a reputation whose scope is identical or similar, but depends on whether or not the applicant for the EU trade mark has violated his duty of fairness in relation to the legitimate interests and expectations of the applicant, with whom he had business relations. In the applicant’s submission, the presence of the figurative element ‘koton’ in the contested mark cannot be accepted as a mere coincidence, and necessarily reflects a dishonest intention on the part of the intervener, its former business partner. In this respect, the applicant relies on three additional factors aimed at establishing the intervener’s dishonest intention and therefore his bad faith when filing his trade mark application, namely, first, the fact that he was aware that the applicant used an identical or similar mark covering identical or similar goods and services, second...