Judgment — ECLI:EU:T:2016:39
Date: 2016-01-28
Language of the case: Spanish
Court formation: Sixth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Spain

Summary — Judgment of the General Court (Sixth Chamber), 28 January 2016 1. Community trade mark — Procedural provisions — Examination of the facts of the Office’s own motion — Facts and evidence not submitted in time — Account taken — Power of assessment of the Office (Council Regulation No 207/2009, Art. 76(2)) 2. Community trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Applicant in bad faith when lodging the trade mark application — Criteria for assessment — Account taken of all relevant factors existing at the time the application for registration lodged — Applicant aware of the use by a third party of an identical or similar sign — Intention of the applicant — Degree of legal protection of the signs at issue (Council Regulation No 207/2009, Art. 52(1)(b)) 3. Community trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Applicant in bad faith when lodging the trade mark application — Figurative mark DoggiS — Word marks DOGGIS and DOGGIBOX (Council Regulation No 207/2009, Art. 52(1)(b)) 1. It follows from the wording of Article 76(2) of Regulation No 207/2009 that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of that regulation and that OHIM is in no way prohibited from taking account of facts and evidence which are submitted or produced out of time, that is to say, after the time limit set by the Cancellation Division and, as the case may be, for the first time before the Board of Appeal. In stating that OHIM ‘may’ decide to disregard facts and evidence submitted or produced out of time, Article 76(2) of Regulation No 207/2009 grants OHIM a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account. Moreover, as regards the exercise of that discretion by OHIM for the purposes of the possible taking into account of evidence submitted out of time, it should be noted that the Court has already held that where OHIM is called upon to give judgment in the context of opposition proceedings, taking such facts or evidence into account is particularly likely to be justified where OHIM considers, first, that the material produced late is, on the face of it, likely to be relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not preclude such matters being taken into account. (see paras 28-30) 2. Pursuant to Article 52(1)(b) of Regulation No 207/2009, a Community trade mark is to be declared invalid on application to OHIM or on the basis of a counterclaim in infringement proceedings, where the applicant acted in bad faith when it filed the application for the trade mark. Where the applicant for a declaration of invalidity seeks to rely on that ground, it is for that party to prove the circumstances which substantiate a finding that the Community trade mark proprietor had acted in bad faith when it filed the application for registration of that mark. The concept of ‘bad faith’ referred to in Article 52(1)(b) of Regulation No 207/2009 is not defined, delimited or even described in any way in EU legislation. According to the case-law, assessment of the applicant’s bad faith must take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration of the sign as a Community trade mark, and in particular: – the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought; – the applicant’s intention to prevent that third party from continuing to use such a sign; – the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought. That being so, the three factors referred to above are only examples drawn from a number of factors which can be taken into account in order to decide whether the applicant for registration was acting in bad faith at the time of filing the trade mark application. It must therefore be held that, in the context of the overall analysis undertaken pursuant to Article 52(1)(b) of Regulation No 207/2009, account may also be taken of the origin of the word or sign making up the contested trade mark, earlier use of it in business as a trade mark, the commercial logic underlying the filing of the application for registration of the sign as a Community trade mark, and the chronology of events relating to the filing. (see paras 44-48) 3. See the text of the decision. (see para. 89)