Target Ventures Group Ltd v European Union Intellectual Property Office.

• Jurisdiction: European Union
• ECLI: ECLI:EU:T:2020:510
• Date: 28 October 2020
• Docket Number: T-273/19
• Celex Number: 62019TJ0273
• Court: General Court (European Union)

JUDGMENT OF THE GENERAL COURT (Third Chamber)

28 October 2020 (*)

(EU trade mark – Invalidity proceedings – EU word mark TARGET VENTURES – Absolute ground for invalidity – 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‑273/19,

Target Ventures Group Ltd, established in Road Town (British Virgin Islands), represented by T. Dolde and P. Homann, lawyers,

applicant,

v

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

defendant,

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

Target Partners GmbH, established in Munich (Germany), represented by A. Klett and C. Mikyska, lawyers,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 4 February 2019 (Case R 1684/2017-2), relating to invalidity proceedings between Target Ventures Group and Target Partners,

THE GENERAL COURT (Third Chamber),

composed of A.M. Collins, President, V. Kreuschitz and G. Steinfatt (Rapporteur), Judges,

Registrar: R. Ūkelytė, Administrator,

having regard to the application lodged at the Court Registry on 24 April 2019,

having regard to the response of EUIPO lodged at the Court Registry on 19 July 2019,

having regard to the response of the intervener lodged at the Court Registry on 17 July 2019,

having regard to the measure of organisation of procedure of 3 December 2019 and the reply of the applicant lodged at the Court Registry on 10 December 2019,

further to the hearing on 26 June 2020,

gives the following

Judgment

Background to the dispute

1 The intervener, Target Partners GmbH, established in Munich (Germany), is a venture capital fund. It has been the proprietor, since 2002, of, in particular, the domain name ‘targetventures.com’ and, since 2009, of the domain name ‘targetventures.de’. However, the content of the websites registered under those domain names has only ever referred to TARGET PARTNERS, which is the sign under which the intervener offers its services. Those sites are merely a means of redirection to the intervener’s official site, ‘www.targetpartners.de’; indeed, they display the content of that site.

2 The applicant, Target Ventures Group Ltd, established in Road Town (British Virgin Islands), also claims to be a venture capital fund. It claims that it has been operating under the sign TARGET VENTURES on the Russian venture capital market since 2012 and on the European Union market since, at least, 8 March 2013. It submits that, between 23 December 2013 and 18 December 2014, it provided financial and monetary services under that sign to five undertakings established in the European Union. It argues that, in return for its financial contribution, it acquired holdings in those undertakings on behalf of its own investors. It submits that those investments are attested to by a number of specialist websites and also by the websites of those undertakings.

3 On 13 and 14 November 2014, two partners of the applicant or of a third party operating under the name of TARGET VENTURES, as well as a representative of the intervener, attended a well-known conference in the investment sector in London (United Kingdom). On 13 November 2014, a representative of a start-up undertaking looking for investors sent two emails to those three people jointly, addressing them by their forenames. Their email addresses, which ended respectively in @targetpartners.de and @targetventures.ru, were visible in those emails.

4 On 27 January 2015, the intervener 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)). Registration as a mark was sought for the word sign TARGET VENTURES (‘the contested mark’).

5 The services in respect of which registration was sought are in Classes 35 and 36 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, and correspond, for each of those classes, to the following description:

– Class 35: ‘Advertising, business management, business administration, business consultancy, office functions’;

– Class 36: ‘Financial affairs, monetary affairs; except payment systems and electronic communication systems in connection with payments and money order services’.

6 The trade mark application was published in Community Trade Marks Bulletin No 33/2015 of 18 February 2015. The contested mark was registered on 28 May 2015 under the number 13685565.

7 Having received an email dated 7 July 2015 sent by a client who had supposedly confused it with the applicant, which was organising a promotional event in Berlin (Germany) on 16 July 2016, the intervener sent the applicant a cease and desist letter, followed by an application for an interim injunction at the Landgericht Berlin (Regional Court, Berlin, Germany), which it withdrew after reservations were expressed by the president of the formation of the Landgericht which had jurisdiction.

8 On 13 July 2015, the applicant filed an application for a declaration of invalidity, under Article 52(l)(b) of Regulation No 207/2009 (now Article 59(l)(b) of Regulation 2017/1001), against the contested mark in respect of all the services referred to in paragraph 5 above.

9 On 25 May 2017, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.

10 On 28 July 2017, the applicant 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.

11 By decision of 4 February 2019 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal brought by the applicant, concluding that the applicant had not proved that the intervener was acting in bad faith when it filed the application for registration of the contested mark.

12 In order to reach that conclusion, in the first place, the Board of Appeal found that, since an application for a declaration of invalidity based on the absolute ground for invalidity contained in Article 59(1)(b) of Regulation 2017/1001 could be filed by any natural or legal person, the applicant did not need to prove a legal interest in bringing proceedings, with the result that it was irrelevant that the documents submitted by the applicant did not make it possible to establish who had actually operated under the sign TARGET VENTURES.

13 In the second place, the Board of Appeal upheld the Cancellation Division’s findings that the applicant had not proved that the intervener knew of the services offered in the European Union by it or by a third party operating under the sign TARGET VENTURES. It found that the applicant had also not shown the intervener’s presumed knowledge of its activities. It stated that the use of the sign TARGET VENTURES in Europe by the applicant or a third party was not so extensive that it could safely be assumed that that sign had become well known or recognised among the relevant public and competitors at the time when the contested mark was applied for. It took the view that, due to the relatively short duration of use of the sign TARGET VENTURES in Europe before 27 January 2015, the applicant would have needed to have proved a high intensity of use or at least broad press coverage of its activities. However, according to the Board of Appeal, there was no such evidence, with the result that it could not be presumed that the intervener had, or at least ought to have had, knowledge of the business activities carried out using the sign TARGET VENTURES by the applicant or a third company. Consequently, the Board of Appeal found that one of the necessary requirements of Article 52(1)(b) of Regulation No 207/2009 had not been fulfilled, with the result that the application for a declaration of invalidity had to be rejected.

14 In the third place, the Board of Appeal took the view that, even if the applicant had proved that the intervener knew or ought to have known that it or a third party had used the sign TARGET VENTURES before the date on which the contested mark was filed, it had not proved that the intervener never had the intention of using that mark, but solely intended to prevent the applicant from entering the European market. It stated that, on the contrary, the evidence submitted by the intervener showed that it had a legitimate business interest in having the contested...