Holzer y Cia, SA de CV v European Union Intellectual Property Office.

• Jurisdiction: European Union
• Celex Number: 62018TJ0003
• ECLI: ECLI:EU:T:2019:357
• Court: General Court (European Union)
• Docket Number: T-3/18,T-4/18
• Procedure Type: Recurso de anulación - infundado
• Date: 23 May 2019

JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

23 May 2019 (*)

(EU trade mark — Invalidity proceedings — EU word and figurative marks ANN TAYLOR and AT ANN TAYLOR — Absolute ground for invalidity — Article 59(1)(b) of Regulation (EU) 2017/1001 — Bad faith)

In Joined Cases T‑3/18 and T‑4/18,

Holzer y Cia, SA de CV, established in Mexico City (Mexico), represented by N. Fernández Fernández-Pacheco and A. Fernández Fernández-Pacheco, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Lukošiūtė and H. O’Neill, acting as Agents,

defendant,

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

Annco, Inc., established in New York, New York (United States), represented by D. Rose, J. Warner, E. Preston, Solicitors, and P. Roberts, QC,

TWO ACTIONS brought against two decisions of the Second Board of Appeal of EUIPO of 2 and of 8 November 2017 (Cases R 2370/2016-2 and R 2371/2016-2), relating to invalidity proceedings between Annco and Holzer y Cia,

THE GENERAL COURT (Fifth Chamber),

composed of D. Gratsias (Rapporteur), President, I. Labucka and I. Ulloa Rubio, Judges,

Registrar: N. Schall, administrator,

having regard to the applications lodged at the Court Registry on 9 January 2018,

having regard to the responses of EUIPO lodged at the Court Registry on 23 March 2018,

having regard to the responses of the intervener lodged at the Court Registry on 23 March 2018,

having regard to the decision of 22 October 2018 joining Cases T‑3/18 and T‑4/18 for the purposes of the oral part of the procedure and of the decision closing the proceedings,

further to the hearing on 22 November 2018,

gives the following

Judgment (1)

…

Law

…

24 In substance, the applicant relies on a single plea in law alleging, in essence, infringement of Article 59(1)(b) of Regulation 2017/1001, in that, according to the applicant, the Board of Appeal was wrong to find that the application for registration of the marks at issue had been filed in bad faith. In support of that plea, the applicant puts forward three complaints alleging errors of assessment concerning, respectively: (1) the existence of a similarity between the signs at issue entailing a likelihood of confusion and the knowledge by the proprietor of the marks at issue of the existence of an identical or similar mark; (2) the intentions of the proprietor of the marks at issue at the time they were filed; and (3) the probative value of the evidence submitted by the intervener in support of its application for a declaration of invalidity and the burden of proof.

25 The intervener submits that, by raising those grounds of complaint, the applicant is not acting in a manner consistent with Article 72(2) of Regulation 2017/1001, since it is not alleging that the Board of Appeal made any error of law or procedure but merely disputes its findings and conclusions.

26 In that regard, first, it should be recalled that, under Article 72(2) of Regulation 2017/1001, an appeal against decisions of the Boards of Appeal may be brought, inter alia, in respect of a breach of that regulation.

27 As stated in paragraph 24 above, the present action is based on a single plea in law, alleging, in essence, infringement of a provision of Regulation 2017/1001, namely Article 59(1)(b) of that regulation.

28 Moreover, it follows from the case-law that, in the context of Article 72(2) of Regulation No 2017/1001, the General Court may carry out a full review of the lawfulness of decisions of the Boards of Appeal of EUIPO, if necessary examining whether the Board of Appeal concerned made a correct legal characterisation of the facts of the dispute or whether its assessment of the facts placed before it was flawed (judgment of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 39).

29 The applicant is therefore entitled, in its single plea, to ask the Court to review the accuracy of the assessments of both the law and the facts underlying the contested decisions.

30 In particular, contrary to what the intervener argued at the hearing, the applicant is entitled to ask the Court to examine, in the context of its review of the lawfulness of the contested decisions, the evidence submitted by the parties before EUIPO in order to check whether the Board of Appeal took sufficient account thereof and correctly assessed their respective relevance or probative value and whether, on that basis, it was entitled to hold that the marks at issue had been filed in bad faith.

31 In that regard, although the concept of bad faith is not defined in EU law, it may be inferred from its usual meaning and the context and objectives of Article 59(1)(b) of Regulation 2017/1001 that, as Advocate General Sharpston stated in point 60 of her Opinion in Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:148), it refers to the subjective motivation of the applicant seeking the registration of the trade mark at issue, namely a dishonest intention or other sinister motive, entailing conduct departing from accepted principles of ethical behaviour or honest commercial and business practices (Opinion of Advocate General Sharpston in Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:148, point 60, and judgment of 7 July 2016, Copernicus-Trademarks v EUIPO — Maquet (LUCEO), T‑82/14, EU:T:2016:396, paragraph 28).

32 That concept is therefore not applicable where the application for registration can be regarded as fulfilling a legitimate objective and the applicant's intention is not contrary to the essential function of a trade mark, which is to guarantee to the consumer or end user the identity of the origin of the goods or services concerned, by enabling him, without any likelihood of confusion, to distinguish those goods or services from those of others (see, to that effect, judgments of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraphs 44 to 49, and of 7 July 2016, LUCEO, T‑82/14, EU:T:2016:396, paragraph 29).

33 Thus, Article 59(1)(b) of Regulation 2017/1001 meets the general interest objective of preventing trade mark registrations that are abusive or contrary to honest commercial and business practices (see, to that effect and by analogy, judgment of 3 June 2010, Internetportal und Marketing, C‑569/08, EU:C:2010:311, paragraphs 36 and 37). Such registrations are contrary to the principle that the application of EU law cannot be extended to cover abusive practices on the part of a trader which do not make it possible to attain the objective of the legislation in question (see, to that effect and by analogy, judgments of 14 December 2000, Emsland-Stärke, C‑110/99, EU:C:2000:695, paragraphs 51 and 52, and of 7 July 2016, LUCEO, T‑82/14, EU:T:2016:396, paragraph 52).

34 It is for the applicant for a declaration of invalidity who intends to rely on Article 59(1)(b) of Regulation 2017/1001 to establish the circumstances which make it possible to conclude that an application for registration of a European Union trade mark was filed in bad faith, the good faith of the applicant being presumed until proven otherwise (judgment of 8 March 2017, Biernacka-Hoba v EUIPO — Formata Bogusław Hoba (Formata), T‑23/16, not published, EU:T:2017:149, paragraph 45).

35 In that regard, if, insofar as it characterises the applicant's intention at the time of filing the application for registration of an EU trade mark, the concept of bad faith, within the meaning of Article 59(1)(b) of Regulation 2017/1001, constitutes a subjective element, it must be determined in the light of the objective circumstances of the case (see, to that effect, judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraph 42).

36 This being so, where EUIPO finds that the objective circumstances of the particular case relied on by the applicant for a declaration of invalidity may lead to the rebuttal of the presumption of good faith applying to the application for registration of the mark at issue, it is for the proprietor thereof to provide plausible explanations on the objectives and commercial logic pursued by the application for registration of that mark.

37 The owner of the trade mark is best placed to provide EUIPO with information on his intentions at the time of applying for registration of that mark and in order to provide it with evidence capable of convincing it that, in spite of the existence of objective circumstances such as those referred to in paragraph 36 above, those intentions were legitimate (see, to that effect and by analogy, judgments of 9 November 2016, Birkenstock Sales v EUIPO (Representation of a pattern of wavy, crisscrossing lines), T‑579/14, EU:T:2016:650, paragraph 136, and of 5 May 2017, PayPal v EUIPO — Hub Culture (VENMO), T‑132/16, not published, EU:T:2017:316, paragraphs 51 to 59).

38 It is in the light of those considerations that the applicant’s various heads of claim should be examined.

The first complaint, alleging an error of assessment by the Board of Appeal relating to the similarity between the signs at issue giving rise to a likelihood of confusion and to awareness, by the proprietor of the marks at issue, of the existence of a similar mark

39 The applicant maintains that a confusing similarity between the signs at issue and the knowledge by the proprietor of the marks at issue of the existence of a similar mark are two of the requirements necessary for a finding of bad faith on the part of that proprietor.

40 The present complaint contains two parts, one alleging an error when determining whether the first of those requirements was met, the other alleging an error when determining whether the second was met.

41 In the first part, the applicant submits that the Board of Appeal erred in finding that there was a similarity liable to cause confusion between the signs at issue, whereas there is no identity of or...