Koton Mağazacilik Tekstil Sanayi ve Ticaret AŞ v European Union Intellectual Property Office.

• Jurisdiction: European Union
• Celex Number: 62018CJ0104
• ECLI: ECLI:EU:C:2019:724
• Court: Court of Justice (European Union)
• Docket Number: C-104/18
• Procedure Type: Recurso de casación - fundado
• Date: 12 September 2019

JUDGMENT OF THE COURT (Fifth Chamber)

12 September 2019 ( *1 )

(Appeal — EU trade mark — Regulation (EC) No 207/2009 — Absolute grounds for invalidity — Article 52(1)(b) — Bad faith at the time that an application for a trade mark is filed)

In Case C‑104/18 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 13 February 2018,

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

appellant,

the other parties to the proceedings being:

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

defendant at first instance,

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

intervener at first instance,

THE COURT (Fifth Chamber),

composed of E. Regan, President of the Chamber, C. Lycourgos, E. Juhász, M. Ilešič (Rapporteur) and I. Jarukaitis, Judges,

Advocate General: J. Kokott,

Registrar: L. Hewlett, Principal Administrator,

having regard to the written procedure and further to the hearing on 6 December 2018,

after hearing the Opinion of the Advocate General at the sitting on 4 April 2019,

gives the following

Judgment

1 By its appeal, Koton Mağazacilik Tekstil Sanayi ve Ticaret AŞ seeks the setting aside of the judgment of the General Court of the European Union of 30 November 2017, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO — Nadal Esteban (STYLO & KOTON) (T‑687/16, not published, ‘the judgment under appeal’, EU:T:2017:853), whereby that court dismissed its action seeking annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 June 2016 (Case R 1779/2015-2), relating to invalidity proceedings between Koton Mağazacilik Tekstil Sanayi ve Ticaret AŞ and Mr Joaquín Nadal Esteban (‘the decision at issue’).

Legal context

2 Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1), which had repealed and replaced Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), was amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21), which entered into force on 23 March 2016. It was subsequently repealed and replaced, with effect from 1 October 2017, 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 In the present case, since the application for registration of the contested mark occurred before 23 March 2016, as did, moreover, the registration decision and the application for a declaration of invalidity, the present dispute must be examined in the light of Regulation No 207/2009 in its original version.

4 Article 7 of that regulation, entitled ‘Absolute grounds for refusal’, provided that signs vitiated by certain defects, such as a purely descriptive nature or a lack of distinctive character, could not be registered as European Union trade marks.

5 Article 8 of that regulation, entitled ‘Relative grounds for refusal’, was worded as follows: ‘1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered: (a) if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected; (b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. 2. For the purposes of paragraph 1, “earlier trade marks” means: (a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the [European Union] trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks: (i) [European Union] trade marks; (ii) trade marks registered in a Member State …; (iii) trade marks registered under international arrangements which have effect in a Member State; (iv) trade marks registered under international arrangements which have effect in the [European Union]; … 5. Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier [European Union] trade mark, the trade mark has a reputation in the [European Union] and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.’

6 Article 52 of Regulation No 207/2009, entitled ‘Absolute grounds for invalidity’, stated: ‘1. A [European Union] trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings: (a) where the [European Union] trade mark has been registered contrary to the provisions of Article 7; (b) where the applicant was acting in bad faith when he filed the application for the trade mark.’ … 3. Where the ground for invalidity exists in respect of only some of the goods or services for which the [European Union] trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only.’

7 Article 53 of that regulation, entitled ‘Relative grounds for invalidity’, provided, in paragraph 1: ‘A [European Union] trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings: (a) where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in paragraph 1 or paragraph 5 of that Article are fulfilled; …’

8 The content of Articles 7, 8, 52 and 53 of Regulation No 207/2009, which corresponded to that of Articles 7, 8, 51 and 52 of Regulation No 40/94, was reproduced in Articles 7, 8, 59 and 60 of Regulation 2017/1001.

9 Under Article 71(1) of Regulation 2017/1001: ‘Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.’

10 Article 72 of that regulation provides: ‘1. Actions may be brought before the General Court against decisions of the Boards of Appeal in relation to appeals. … 3. The General Court shall have jurisdiction to annul or to alter the contested decision. … 6. The Office shall take the necessary measures to comply with the judgment of the General Court or, in the event of an appeal against that judgment, the Court of Justice.’

Background to the dispute and the decision at issue

11 On 25 April 2011, Mr Nadal Esteban (‘the intervener’) filed an application with EUIPO for registration of the following sign as a European Union trade mark:

12 That registration was sought in respect of goods and services in Classes 25, 35 and 39 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 (‘the Nice Agreement’). Those goods and services corresponded to the following description: – Class 25: ‘Clothing, footwear, headgear’; – Class 35: ‘Advertising; business management; business administration; office functions’; – Class 39: ‘Transport; packaging and storage of goods; travel arrangement’.

13 On 26 August 2011, the appellant, an undertaking which produces and offers for sale clothing, footwear and accessories, filed a notice of opposition, relying on the following earlier marks: – the trade mark registered in Malta in respect of goods and services in Classes 25 and 35 of the Nice Agreement, reproduced below: – the trade mark, for goods and services in Classes 18, 25 and 35 of the Nice Agreement, registered under international arrangements with effect in several Member States of the European Union, reproduced below:

14 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

15 By decision of 31 October 2013, EUIPO upheld the opposition solely to the extent that the opposition related to the goods and services in Classes 25 and 35 of the Nice Agreement. However, it rejected the opposition in relation to the services of Class 39 of that agreement.

16 On 23 June 2014, that decision was confirmed by the Fourth Board of...