Judgments nº T-340/16 of Tribunal General de la Unión Europea, May 31, 2018

• Resolution Date: May 31, 2018
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-340/16

(EU trade mark - Invalidity proceedings - European Union figurative mark Outsource 2 India - Bad faith - Article 52(1)(b) of Regulation (EC) No 207/2009) (now Article 59(1)(b) of Regulation (EU) 2017/1001) In Case T-340/16,

Flatworld Solutions Pvt Ltd, established in Bangalore (India), represented by S.O. Gillert, K. Vanden Bossche, B. Köhn-Gerdes and J. Schumacher, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,

defendant,

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

Outsource Professional Services Ltd, established in Friedrichshafen (Germany), represented by A. Kempter, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 15 April 2016 (Case R 611/2015-4), relating to invalidity proceedings between Flatworld Solutions and Outsource2India,

THE GENERAL COURT (Seventh Chamber),

composed of V. Tomljenović, President, E. Bieliūnas (Rapporteur) and A. Kornezov, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 28 June 2016,

having regard to the response of EUIPO lodged at the Court Registry on 24 August 2016,

having regard to the response of the intervener lodged at the Court Registry on 28 September 2016,

having regard to the order of 8 December 2016 granting leave to Outsource Professional Services to replace Outsource2India,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks from notification of the closure 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 June 2007, Outsource2India Ltd, replaced with the Court’s leave, by the intervener, Outsource Professional Services Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), as amended, itself 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 mark was registered on 20 May 2008 under No 006035547 in respect of services in Classes 35, 36 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.

4 On 27 April 2010, the applicant, Flatworld Solutions Pvt Ltd, also filed an application for registration of an EU trade mark with EUIPO. The mark was registered on 25 May 2011 under number 009059494 for services in Classes 35, 36 and 42 and was composed of the following figurative sign:

5 On 4 February 2013, the applicant filed an application for a declaration of invalidity, pursuant to Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001), in respect of the intervener’s figurative mark for the services referred to in paragraph 3 above.

6 On 3 February 2015, the Cancellation Division upheld the application for a declaration of invalidity. It considered that it was apparent from the case file that the intervener had intentionally sought to appropriate the applicant’s mark and that it had therefore acted in bad faith when filing the application for registration of the contested mark, since the latter contained the same word element as that of the applicant’s mark.

7 On 22 March 2015, the intervener 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.

8 By decision of 15 April 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO annulled the decision of the Cancellation Division. In particular, it considered that it was not apparent from the case file that the intervener had acted in bad faith or with dishonest intent when it requested registration of the contested mark.

Forms of order sought

9 The applicant claims that the Court should:

- annul the contested decision;

- confirm the decision of the Cancellation Division;

- order EUIPO to pay the costs.

10 EUIPO and the intervener contend, respectively, that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

Admissibility

Admissibility of the action

11 The intervener submits that the action is inadmissible in that the applicant should have lodged the application with the Court Registry on 18 June 2016, that is to say, within two months from notification of the contested decision, namely on 18 April 2016, in accordance with Article 65(5) of Regulation No 207/2009 (now Article 72(5) of Regulation No 2017/1001), and not, as it did, on 28 June 2016.

12 It must be borne in mind that, in accordance with Article 60 of the Rules of Procedure, procedural time limits are extended on account of distance by a single period of 10 days. Accordingly, the action brought by the applicant, 2 months and 10 days after notification of the contested decision, is admissible.

Admissibility of the applicant’s second head of claim

13 By its second head of claim, the applicant asks the Court to confirm the Cancellation Division’s decision of 3 February 2015 granting the application for a declaration of invalidity.

14 It must be noted that, by its second head of claim, the applicant seeks to obtain a confirmatory ruling from the Court. It follows from Article 65(2) and (3) of Regulation No 207/2009 (now Article 72(2) and (3) of Regulation 2017/1001) that actions brought before the General Court seek to have the lawfulness of decisions of the Boards of Appeal examined and to obtain, as the case may be, the annulment or alteration of those decisions (judgment of 15 June 2010, Actega Terra v OHIM (TERRAEFFEKT matt & gloss), T-118/08, not published, EU:T:2010:234, paragraph 10). Consequently, such an action cannot have the objective of obtaining confirmatory or declaratory rulings in respect of those decisions (order of 7 May 2014, Sharp v OHIM (BIG PAD), T-567/13, not published, EU:T:2014:257, paragraph 11, and judgment of 14 March 2017, IR v EUIPO - Pirelli Tyre (popchrono), T-132/15, not published, EU:T:2017:162, paragraph 27).

15 Therefore, as EUIPO rightly pointed out, the applicant’s second head of claim must be rejected as inadmissible.

16 As to the remainder, the action is admissible and must be examined on the merits.

Substance

17 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.

18 The applicant claims that the Board of Appeal erred in law in finding that the intervener had not acted in bad faith when it sought registration of the contested mark. In its first complaint, the applicant states that the Board of Appeal erred in stating that the applicant did not have anytrade mark rights in the earlier mark. By its second and third complaints, the applicant contends, in essence, that the Board of Appeal’s assessment of the comparison of the signs is vitiated by inconsistency in that, on the one hand, it relies on the logo of the applicant’s company containing the wording ‘outsource2india’ (‘the applicant’s logo’) as evidence of an agreement between the parties, while, on the other hand, it assesses the degree of distinctiveness of the word element common to the signs at issue, but omits to carry out an overall assessment of the signs. In its fourth complaint, the applicant claims that the Board of Appeal failed to have regard to the fact that it was the proprietor of domain namesconstituting earlier signs for the purpose of Article 51(1)(b) of Regulation No 207/2009 (now Article 58(1)(b) of Regulation 2017/1001). Finally, by its fifth complaint, the applicant, first, states that it is clear from the evidence that it has adduced that the intervener was aware of the existence of the earlier signs of the applicant, with which it had a pre-contractual relationship, and therefore that it filed for registration of the contested mark with dishonest intent. Second, the applicant submits that the Board of Appeal did not assess the similarity between the contested mark and the earlier signs, even though that similarity could create confusion and constitute a prerequisite for the application of Article 52(1)(b) of Regulation No 207/2009.

19 EUIPO and the intervener dispute the applicant’s arguments. They maintain that the applicant has not shown that it has acquired trade mark rights in the territory of the European Union through the alleged use of the wording ‘outsource2india’, given the descriptive character of the latter. As regards the first complaint, EUIPO submits that the applicant misinterprets the contested decision, since the Board of Appeal did not in any way wish to suggest that earlier trade mark rights are necessary for a finding of bad faith. As for the second and third complaints, EUIPO considers that, with regard to the assessment of the similarity of the signs, the Board of Appeal did not in any way contradict itself by finding that the use of the logo was the only evidence of an agreement between the parties and that that logo was the only factor which made it possible to differentiate the applicant’s mark from the contested mark, the identical wording of those marks having the same descriptive character. As regards the fourth complaint, EUIPO considers that the applicant has not explained how a...