Judgments nº T-796/17 of Tribunal General de la Unión Europea, February 14, 2019

• Resolution Date: February 14, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-796/17

(EU trade mark - Invalidity proceedings - EU word mark MOULDPRO - Absolute ground for invalidity - Bad faith - Article 59(1)(b) of Regulation (EU) 2017/1001 - Relative grounds for invalidity - Article 60(1)(b) and Article 8(3) of Regulation 2017/1001 - Article 60(1)(c) and Article 8(4) of Regulation 2017/1001) In Case T-796/17,

Mouldpro ApS, established in Ballerup (Denmark), represented by: W Rebernik, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by P. Sipos and D. Walicka, acting as Agents,

defendant,

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

Wenz Kunststoff GmbH & Co. KG, established in Lüdenscheid (Germany), represented by J. Bühling and D. Graetsch, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 16 October 2017 (Case R 2153/2015-4) relating to invalidity proceedings between Mouldpro and Wenz Kunststoff,

THE GENERAL COURT (Fifth Chamber),

composed of D. Gratsias, President, I. Labucka and A. Dittrich (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 6 December 2017,

having regard to the response of EUIPO lodged at the Court Registry on 6 March 2018,

having regard to the response of the intervener lodged at the Court Registry on 22 March 2018,

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 6 June 2011, the intervener, Wenz Kunststoff GmbH & Co. KG, filed 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 On 7 November 2011, the intervener obtained, from EUIPO, registration, under number 10022317, of the EU word mark MOULDPRO.

3 The goods in respect of which registration was sought are in Class 17 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Hose couplings of plastic (included in Class 17), hoses, rapid-release couplings for hoses, hose connection couplings’.

4 On 23 June 2014, the applicant, Mouldpro ApS, filed an application seeking a declaration that the contested mark was invalid in respect of the goods referred to in paragraph 3 above on the basis, first, of Article 53(1)(b) and (c) of Regulation No 207/2009 (now Article 60(1)(b) and (c) of Regulation 2017/1001), read in conjunction with Article 8(3) and (4) of Regulation No 207/2009 (now Article 8(3) and (4) of Regulation 2017/1001) and, second, of Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001).

5 On 1 October 2015, the Cancellation Division rejected in its entirety the application for a declaration of invalidity.

6 On 27 October 2015, the applicant filed an 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.

7 By decision of 16 October 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.

8 In the first place, as regards the ground for invalidity referred to in Article 60(1)(c) of Regulation 2017/1001, read in conjunction with Article 8(4) of that regulation, the Board of Appeal found, first, that the action was inadmissible in so far as the applicant had invoked for the first time at the appeal stage an additional earlier right as the basis for its application for a declaration of invalidity, namely an earlier Danish company name, in addition to an earlier unregistered Danish trade mark. Second, as regards the earlier unregistered Danish trade mark, the Board of Appeal rejected part of the evidence provided by the applicant as inadmissible and found that the admissible evidence did not show that the applicant had used the sign MOULDPRO in the course of trade either before the date of filing of the application for registration of the contested mark or at the date of the application for a declaration of invalidity.

9 In the second place, the Board of Appeal rejected the application of the ground for invalidity referred to in Article 59(1)(b) of Regulation 2017/1001 on the basis that the applicant had not shown that the intervener had acted in bad faith when filing the application for registration of the contested mark. In that regard, the Board of Appeal found, in essence, that the evidence provided by the applicant was not capable of demonstrating that the intervener knew or must have known that the applicant was using the sign MOULDPRO for goods similar to those covered by the contested mark or that there was malicious intention on the part of the intervener.

10 In the third place, the Board of Appeal found, as regards the ground for invalidity referred to in Article 60(1)(b) of Regulation 2017/1001, read in conjunction with Article 8(3) thereof, that the applicant did not appear to contest the Cancellation Division’s finding that no ‘agent-principal’ relationship had been established but that, in any event, no contractual relationship existed between the two parties either at the date of filing of the application for registration of the contested mark or before that date and that the applicant could not invoke the cooperation between the intervener and the third-party company H., which, moreover, had ended in 2006.

Forms of order sought

11 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs, including those incurred in the proceedings before the Board of Appeal.

12 EUIPO contends that the Court should:

- dismiss the action in its entirety;

- order the applicant to pay the costs incurred by EUIPO.

13 The intervener contends that the Court should:

- dismiss the application;

- order the applicant to pay the costs, including those incurred by the intervener.

Law

14 In support of its action, the applicant relies on three pleas in law alleging, first, infringement of Article 60(1)(b) of Regulation 2017/1001, read in conjunction with Article 8(3) thereof, second, infringement of Article 60(1)(c) of Regulation 2017/1001, read in conjunction with Article 8(4) thereof, and, third, infringement of Article 59(1)(b) of Regulation 2017/1001.

The first plea in law, alleging infringement of Article 60(1)(b) of Regulation 2017/1001, read in conjunction with Article 8(3) thereof

15 In the context of its first plea in law, the applicant claims that the Board of Appeal erred in finding that it had not demonstrated the existence of an agent-principal or representation relationship between the intervener and itself within the meaning of Article 8(3) of Regulation 2017/1001.

16 In paragraphs 59 and 60 of the contested decision, the Board of Appeal noted that the applicant appeared to accept the finding of the Cancellation Division that no ‘agent-principal’ relationship between the two parties had been established. The Board of Appeal also added that, in any event, first, no contractual relationship existed between the applicant and the intervener either at the date of filing of the application for registration of the contested mark, namely 6 June 2011, or before that date. Second, it denied that any relevance attached to the cooperation between the intervener and the Danish company H. because, in its opinion, Article 8(3) of Regulation 2017/1001 cannot be invoked by a third-party company and it could not be concluded that the intervener would still have to meet post-contractual obligations in 2011, since that contractual relationship had ended in 2006.

17 The applicant disputes that assessment and claims, first, that the terms ‘agent’ and ‘representative’ must be interpreted broadly, that no formal written contract is required and that the material question is whether it is the cooperation with the proprietor of the mark that provided the trade mark applicant with the opportunity to become acquainted with and appreciate the value of that mark and persuaded it to register the mark in its own name. Second, the applicant maintains that the Board of Appeal did not take into account the continuous relationship between the intervener’s director and the applicant’s director, namely Mr W. and Mr H. S., respectively. From 2001 to 2006, the intervener purchased a substantial amount of goods from H., the applicant’s parent company of which Mr H. S. is also a director, in order to sell them on the German market. From 2007 to 2009, the intervener acted as a distributor in Germany for the Danish company T., the director of which was also Mr H. S., while, in 2010, the applicant was established and, in 2011, Mr H. S. asked Mr W. to discuss a new collaboration, following which the intervener filed the application for registration of the contested mark in June 2011. According to the applicant, it is only because of that continuous relationship and the continuous exchange of information between the parties - information that is not normally exchanged with a third party - that the intervener obtained information on the MOULDPRO mark and applied for registration of the contested mark with the sole objective of keeping the applicant out of the German market. Third, the applicant claims that it is impossible that the intervener could...