Hijos de Moisés Rodríguez González, SA v European Union Intellectual Property Office.

• Jurisdiction: European Union
• ECLI: ECLI:EU:T:2022:404
• Docket Number: T-306/20
• Date: 29 June 2022
• Celex Number: 62020TJ0306
• Court: General Court (European Union)

JUDGMENT OF THE GENERAL COURT (Sixth Chamber, Extended Composition)

29 June 2022 ( *1 )

(EU trade mark – Invalidity proceedings – EU figurative mark La Irlandesa 1943 – Absolute grounds for invalidity – Declaration of invalidity by the Grand Board of Appeal of EUIPO – Evidence submitted for the first time before the Court – Relevant date for the examination of an absolute ground for invalidity – Mark of such a nature as to deceive the public – Article 7(1)(g) of Regulation (EC) No 207/2009 (now Article 7(1)(g) of Regulation (EU) 2017/1001) – Bad faith – Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001))

In Case T‑306/20,

Hijos de Moisés Rodríguez González, SA, established in Las Palmas de Gran Canaria (Spain), represented by J. García Domínguez, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, D. Hanf and E. Markakis, acting as Agents,

defendant,

the other party to the proceedings before the Grand Board of Appeal of EUIPO being

Ireland,

and

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

Ornua Co-operative Ltd, established in Dublin (Ireland), represented by E. Armijo Chávarri and A. Sanz Cerralbo, lawyers,

THE GENERAL COURT (Sixth Chamber, Extended Composition),

composed of A. Marcoulli, President, S. Frimodt Nielsen, J. Schwarcz (Rapporteur), C. Iliopoulos and R. Norkus, Judges,

Registrar: A. Juhász-Tóth, Administrator,

having regard to the written part of the procedure,

further to the hearing on 3 February 2022,

gives the following

Judgment

1 By its action under Article 263 TFEU, the applicant, Hijos de Moisés Rodríguez González, SA, seeks the annulment of the decision of the Grand Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 March 2020 (Case R 1499/2016-G) (‘the contested decision’).

Background to the dispute

2 On 6 August 2013, the applicant filed an application for registration of an EU trade mark with 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)).

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

4 On 3 January 2014, the mark applied for was registered in respect of the following goods in Class 29 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: ‘Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats’.

5 On 7 January 2015, Ireland and the intervener, Ornua Co-operative (previously known as Irish Dairy Board Co-operative Ltd), filed an application for a declaration that the contested mark was invalid in respect of all the goods referred to in paragraph 4 above.

6 In the application for a declaration of invalidity it was claimed that the mark was deceptive under the provisions of Article 52(1)(a) of Regulation No 207/2009, in conjunction with Article 7(1)(g) of that regulation (now Article 59(1)(a) and Article 7(1)(g) of Regulation 2017/1001), and that the registration of that mark had been applied for in bad faith for the purposes of Article 52(1)(b) of that regulation (now Article 59(1)(b) of Regulation 2017/1001).

7 By decision of 15 June 2016, the Cancellation Division rejected the application for a declaration of invalidity in its entirety. It found that Article 7(1)(g) of Regulation No 207/2009 was not applicable, because it had to be established that the contested mark was deceptive at the time it was filed. The Cancellation Division took the view that, in the case before it, any possible deception resulted from the use of that mark after the end of the commercial agreement which had been entered into by the applicant and the intervener and which was in force from 1967 to 2011. It found that that situation was specifically covered by the ground for revocation laid down in Article 51(1)(c) of Regulation No 207/2009 (now Article 58(1)(c) of Regulation 2017/1001). The Cancellation Division also rejected the argument raised under Article 52(1)(b) of that regulation, finding that no conclusion regarding bad faith could be drawn from the fact that the contested mark had been filed after the termination of the business relationship with the intervener.

8 On 12 August 2016, Ireland and the intervener filed a notice of appeal with EUIPO against the Cancellation Division’s decision.

9 By decision of 6 December 2017, the Presidium of the Boards of Appeal referred the case to the Grand Board of Appeal.

10 By the contested decision, the Grand Board of Appeal of EUIPO found that, at the time when the application for registration was filed, the contested mark was used in a deceptive manner. It also found that the registration of that mark had been applied for in bad faith. Consequently, it annulled the Cancellation Division’s decision and declared the contested mark invalid.

Forms of order sought

11 The applicant claims that the Court should: – annul the contested decision; – order EUIPO and the intervener to pay the costs.

12 EUIPO and the intervener contend that the Court should: – dismiss the action; – order the applicant to pay the costs.

13 Ireland has not lodged a response and has not therefore sought any form of order in the present case.

Law

14 In view of the date on which the application for registration at issue was filed, namely 6 August 2013, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgment of 29 September 2021, Univers Agro v EUIPO – Shandong Hengfeng Rubber & Plastic (AGATE), T‑592/20, not published, EU:T:2021:633, paragraph 19 and the case-law cited). Moreover, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see, to that effect, judgment of 8 September 2021, Qx World v EUIPO – Mandelay (EDUCTOR), T‑84/20, not published, EU:T:2021:555, paragraph 17 and the case-law cited), the present dispute is governed by the procedural provisions of Regulation 2017/1001.

15 Consequently, in the present case, so far as concerns the substantive rules, the references to Article 59(1)(a) and (b) and to Article 7(1)(g) of Regulation 2017/1001 made by the Grand Board of Appeal in the contested decision and by the parties to the proceedings must be understood as referring to Article 52(1)(a) and (b) and Article 7(1)(g) of Regulation No 207/2009 respectively, which are worded identically to those later provisions.

Documents submitted for the first time before the Court

16 EUIPO and the intervener contend that Annexes A.6 to A.8 to the application are inadmissible. They argue that those annexes contain documents which were never submitted in the course of the administrative proceedings before EUIPO and which must therefore, according to settled case-law, be declared inadmissible.

17 It must be stated, as EUIPO and the intervener maintain, that Annexes A.6 to A.8 to the application were submitted for the first time before the Court. Annexes A.6 and A.7 contain documents relating to advertising expenditure, as well as certain invoices and data regarding annual sales under the contested mark. They seek to prove both the size of that mark’s market share in the Canary Islands (Spain) and its reputation there, as well as the distinctive character acquired by that mark. Annex A.8 consists of a sworn statement by one of the applicant’s representatives dated 15 May 2020, that is to say, after the contested decision, which was delivered on 2 March 2020.

18 Those documents, which were produced for the first time before the Court, cannot be taken into consideration. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO in accordance with Article 72 of Regulation 2017/1001, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded, without it being necessary to assess their probative value (see, to that effect, judgments of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited, and of 18 March 2016, Karl-May-Verlag v OHIM – Constantin Film Produktion (WINNETOU), T‑501/13, EU:T:2016:161, paragraph 17).

Substance

Preliminary observations regarding the pleas raised by the applicant and the structure of the contested decision

19 The applicant relies on two pleas in law, alleging, first, infringement of the provisions of Article 52(1)(a) of Regulation No 207/2009, in conjunction with Article 7(1)(g) thereof, relating to trade marks which are of such a nature as to deceive the public, and, second, infringement of Article 52(1)(b) of that regulation; a provision concerning trade mark applications which have been filed in bad faith.

20 The reasoning in the...