Judgment;Information — ECLI:EU:T:2025:354
Date: 2025-04-02
Language of the case: English
Court formation: Third Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded;Action for annulment - inadmissible
Origin: Italy

summary of the applicant’s arguments submitted before the Cancellation Division, set out in paragraph 6 of the contested decision, that it maintained that the deceptiveness had also been increased by the use of the colours red and white, which are exactly the same as the colours of the Swiss flag, and by the fact that, of the 26 cantons, 11 coats of arms contain black elements. Thus, while it follows from paragraph 40 of the contested decision that no arguments had been put forward by the applicant regarding the allusion that the figurative elements may make to Switzerland, the Board of Appeal considers, in paragraphs 7 and 51 of that decision, that the applicant did put forward such arguments, but that they could not succeed. 83 However, the argument alleging that contradiction cannot be upheld. Even if the Board of Appeal erred in finding, in paragraph 40 of the contested decision, that no arguments had been put forward by the applicant regarding the allusion which the figurative elements could make to Switzerland, it nevertheless took account of the arguments put forward by the applicant in that regard, with the result that it is in no way impossible for the parties and the Courts of the European Union to understand the statement of reasons for the contested decision. 84 The applicant is also incorrect in claiming that it is unclear to which items of evidence the Board of Appeal refers in paragraph 42 of the contested decision. It is apparent from paragraph 75 above that it referred to all the documents in the Board of Appeal’s file which relate to cosmetics. 85 Lastly, in so far as the applicant claims that it does not understand whether the finding in paragraph 42 of the contested decision that the evidence does not refer either to the relevant date or to the goods in question concerns the issue of the alleged deceptive use of that mark or the reputation of Switzerland, it must be held that the wording of paragraph 42 of the contested decision is clear inasmuch as it states that none of that evidence is, for the two reasons that have just been mentioned, capable of supporting the applicant’s claims regarding the deceptiveness of the contested mark at the time when the application for registration was filed, which then had repercussions on the analysis of whether there had been bad faith at the time of that filing (paragraphs 52 and 53 of the contested decision). 86 As regards the alleged lack of explanation of the reasons why cosmetic goods are different from the goods concerned, including food supplements, it must be stated that the respective meanings of those concepts are sufficiently clear and distinct, such that the meanings did not require further explanation. In essence, cosmetic goods are intended for external use, be it on the skin, hair or nails, whereas food supplements are ingested. 87 That complaint must therefore be rejected, with the result that the second plea in law must be rejected in its entirety. The third plea in law 88 In the first place, the applicant criticises, first of all, the Board of Appeal’s conclusion in paragraph 41 of the contested decision that, in essence, the contested mark is not deceptive if ‘the products for which [that mark] enjoys protection may be produced in Switzerland.’ According to the applicant, if the products in respect of which a trade mark is registered may not reasonably be produced in a certain place, which would also imply that that place does not have a reputation in connection with those products, the mention of that place by a trade mark is fanciful or arbitrary, and not misleading, as no customer would make a link between the geographical term and the geographical origin of that product. It argues that the contested mark, however, used for health, wellness or dermatology products, does deceive consumers because they would immediately think that those products originate from Switzerland, given its alleged reputation for health, wellness, dermatology and pharmaceutical products. The applicant maintains that Switzerland’s reputation in those fields was not disputed by the intervener and was established in paragraph 42 of the contested decision in relation to cosmetics and in paragraph 54 of that decision in relation to pharmaceutical products. It submits that the Board of Appeal’s interpretation would deprive Article 7(1)(g) of Regulation No 40/94 of its substance with regard to geographical indications, since any product could theoretically be manufactured in a given place. 89 According to the applicant, it is apparent from the decision of the Grand Board of Appeal of 2 March 2020 in Case R 1499/2016-G, Ornua Co-operative Ltd v Hijos de Moisés Rodríguez González, ‘La Irlandesa’ (paragraphs 34 to 48), that the applicant for a declaration of invalidity has to prove only that the products designated by the contested mark did not have an origin corresponding to the indication of source evoked by that mark. 90 Next, the applicant submits that, according to the contested decision, a serious risk of deception exists only if the intervener had already used the contested mark on the relevant date in a deceptive way or if there had been any other similar behaviour. It maintains that it has been proved that the intervener had used the contested mark deceptively in Australia since the 1960s. Furthermore, it argues that it is not necessary to prove that a deceptive trade mark has been used in a deceptive way before or on the relevant date; most registered trade marks are not used before and sometimes even after registration, as most entrepreneurs register the trade mark first and finalise their plans actually to use it only afterwards. 91 The applicant submits that, in the present case, it follows from the extracts from the intervener’s website that the proprietor of the contested mark had initially intended to use it only in Australia and that it did not produce or market anything outside that country until the 2010s. It maintains, however, that the application for registration of the contested mark was filed in 2003 and concerned the ‘wellness market’, that is to say, precisely the market in which Swiss goods and services enjoy a strong reputation. According to the applicant, it is obvious in that context that, on the relevant date, the likelihood of the products covered by the contested mark being manufactured in Switzerland rather than in Australia, where the intervener was the leader in the wellness market, was zero. 92 Lastly, although the Board of Appeal states in paragraph 56 of the contested decision that the refusal of the Federal Institute of Intellectual Property is irrelevant for the purpose of determining the registrability of the contested mark, the applicant submits that that refusal demonstrates that products bearing the contested mark could not even be manufactured in Switzerland. 93 In the second place, the applicant claims that, having regard to the slight misspelling in the word element of the contested mark, the Board of Appeal erred in considering that it was sufficiently distinguishable from the words ‘suisse’ and ‘swiss’, such that it cannot deceive the relevant public. Moreover, the other elements of the contested mark are essentially the colours of the Swiss flag. 94 The applicant submits that the Board of Appeal was also incorrect in considering that a mark which is geographically evocative but not invalid under Article 7(1)(b) or (c) of Regulation No 40/94 cannot be deceptive. 95 In the third place, it maintains that the contested decision infringes Article 7(1)(g) of Regulation No 40/94, since, with regard to indications of geographical origin, any interpretation must be consistent with Article 3bis of the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, concluded in 1891, revised in Washington in 1911, The Hague in 1925, London in 1934, Lisbon in 1958 and Stockholm in 1967, which is in force in most of the countries of the European Union. 96 EUIPO and the intervener dispute the applicant’s arguments. 97 Under the provisions of Article 51(1)(a) of Regulation No 40/94, in conjunction with Article 7(1)(g) thereof, a trade mark is to be declared invalid where it has been registered despite being of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service. 98 According to settled case-law, the only date which is relevant for the purposes of the assessment of an application for a declaration of invalidity is the date of filing of the application for the mark at issue (orders of 24 September 2009, Bateaux mouches v OHIM, C‑78/09 P, not published, EU:C:2009:584, paragraph 18, and of 23 April 2010, OHIM v Frosch Touristik, C‑332/09 P, not published, EU:C:2010:225, paragraph 41). However, the case-law allows material subsequent to that date to be taken into account if it relates to the situation on the date of filing of the trade mark application (judgment of 29 June 2022, Hijos de Moisés Rodríguez González v EUIPO – Ireland and Ornua (La Irlandesa 1943), T‑306/20, EU:T:2022:404, paragraph 54). 99 The circumstances referred to in Article 7(1)(g) of Regulation No 40/94 presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 55). 100 The assessment of the ground mentioned in Article 7(1)(g) of Regulation No 40/94 cannot extend to anything other than the goods or services in question, on the one hand, and the perception of the mark by the relevant public, on the other (judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 56). 101 Moreover, Article 7(1)(g) of Regulation No 40/94 implies a sufficiently specific designation of potential characteristics of the goods and services covered by the trade mark. Only where the targeted consumer is led to believe that the goods and services possess certain characteristics which they do not in fact possess will he or she be deceived by the trade mark (judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 57). 102 Under Article 7(2) of Regulation No 40/94 (now Article 7(2) of Regulation 2017/1001), Article 7(1) of that regulation is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union. 103 In the present case, it is apparent from paragraph 38 of the contested decision that the Board of Appeal took into consideration, from a geographical point of view, consumers throughout the European Union and based its analysis on the English-speaking and French-speaking parts of that public. 104 Following the finding in paragraph 39 of the contested decision, according to which the word element ‘swisse’ cannot deceive the public since an unknown term cannot deceive the public, the analysis set out in paragraphs 41 to 45 of the contested decision – which starts from the alternative assumption that the term ‘swisse’ is understood as a clear and direct reference to ‘Swiss’ or ‘Switzerland’, which might indicate to consumers that the goods come from that country – reaches the conclusion that that term does not – in the abstract – deceive consumers. 105 Articles 51 to 53 of Regulation No 40/94 (now Articles 59 to 61 of Regulation 2017/1001) govern the grounds for invalidity of an EU trade mark, whereas a separate provision, Article 50 of that regulation, concerns grounds for revocation (judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 63). 106 The misleading nature of a mark constitutes an absolute ground for invalidity of that mark under the provisions of Article 51(1)(a) of Regulation No 40/94, in conjunction with Article 7(1)(g) thereof, and, in addition, a ground for revocation under Article 51(1)(c) of that regulation (judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 64). 107 Article 50(1)(c) of Regulation No 40/94 provides expressly that the misleading nature of a registered trade mark, which justifies a declaration that the rights of its proprietor are revoked, arises from the use made of that mark, whereas the provisions of Article 51(1)(a) of that regulation, in conjunction with Article 7(1)(g) thereof, which render invalid a mark that has been registered in spite of its deceptive nature, do not contain any reference to such use (judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 65). 108 It follows from the foregoing that, in principle, the examination of an application for revocation within the meaning of Article 50(1)(c) of Regulation No 40/94 requires that account be taken of the actual use of the mark and thus of evidence subsequent to its filing, whereas that is not the case for the purpose of examining an application for a declaration of invalidity brought under the provisions of Article 51(1)(a) of Regulation No 40/94, in conjunction with Article 7(1)(g) thereof. The examination of such an application for a declaration of invalidity requires that it be established that the sign filed for the purposes of registration as a mark was per se of such a nature as to deceive the consumer at the time of filing of the application for registration, since the subsequent management of that sign is irrelevant (judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 66). 109 That principle is confirmed by the case-law, according to which the only date which is relevant for the purposes of the assessment of an application for a declaration of invalidity is the date of filing of the application for the mark at issue and according to which material subsequent to the date of filing of the trade mark application may be taken into account only if it relates to the situation on that date (see judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 67 and the case-law cited). 110 In other words, in the case of invalidity, the question which arises is whether the mark should not have been registered ab initio for reasons already existing on the date of the trade mark application, since the consideration of subsequent evidence can serve only to clarify the circumstances as they were on that date (judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 68). 111 In the present case, as has been found in paragraph 104 above, the Board of Appeal, in paragraphs 41 to 45 of the contested decision, assessed the application of the ground for invalidity laid down in the provisions of Article 51(1)(a) of Regulation No 40/94, in conjunction with Article 7(1)(g) thereof, based on the alternative assumption that the term ‘swisse’ is understood as a clear and direct reference to ‘Swiss’ or ‘Switzerland’, which might indicate to consumers that the goods come from that country. 112 As EUIPO and the intervener correctly contend, for the purpose of applying Article 7(1)(g) of Regulation No 40/94, the Board of Appeal had to ascertain whether, on the relevant date, there was any inconsistency between the information which the contested mark conveyed and the characteristics of the goods designated in the application for registration. The list of goods covered by the contested mark did not contain any indication of their geographical origin, nor was it impossible for the goods concerned to be manufactured in Switzerland; therefore, the contested mark could cover goods originating from Switzerland. Accordingly, there was no inconsistency in the present case, on the relevant date, between the information which the contested mark was able to convey and the goods designated, with the result that it was not possible to find that that mark was misleading on that date (see, to that effect, judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 71). 113 That conclusion is not called into question by the applicant’s arguments. 114 In the first place, in the light of paragraphs 103 and 104 above, it is not necessary to assess the applicant’s arguments that the contested decision contains an error in paragraphs 38 and 39 thereof inasmuch as it states that the word element of the contested mark is sufficiently distinguishable from the words ‘suisse’ and ‘swiss’ such that it cannot deceive the relevant public. The analysis of the application of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(g) thereof, carried out in paragraphs 41 to 45 of the contested decision, starts from the assumption that the contested mark will be understood as referring to a Swiss origin of the goods concerned. 115 In the second place, as the examination of an application for a declaration of invalidity such as the one in the present case requires that it be established that the sign filed for the purposes of registration as a mark was per se of such a nature as to deceive the consumer at the time of the application for registration, the subsequent management of that sign is irrelevant. It follows that the extracts from the intervener’s website, relating to the history of the use of the sign at issue in Australia and of its subsequent expansion, are irrelevant. 116 In the third place, and in the light of the reasons set out in paragraphs 105 to 112 above, it must be recalled that the Board of Appeal had to ascertain whether, on the relevant date, there was any inconsistency between the information which the contested mark conveyed as such and the characteristics of the goods designated in the application for registration, the use of that mark being irrelevant for the purposes of that analysis. Thus, by stating, in the second sentence of paragraph 43 of the contested decision, in essence, that a serious risk of deception presupposes that it is proved that the applicant had already used the contested mark in a deceptive way on the date of the application for registration, the Board of Appeal refers to a criterion which is not relevant in the context of the examination of the ground for invalidity under Article 7(1)(g) of Regulation No 40/94. Thus, the applicant’s arguments directed against that part of the statement of reasons for the contested decision and seeking to demonstrate deceptive use of the mark prior to the relevant date must be rejected as ineffective. 117 In the fourth place, as regards the effect of the provisional or definitive refusal to register the sign at issue in Switzerland, contained in Annexes 11 and 12 of the applicant’s annexes in the Board of Appeal’s file, it must be borne in mind, first of all, that, having regard to the autonomy of the EU trade mark system, EUIPO and, as the case may be, the Courts of the European Union are not bound by a decision adopted in a Member State or in a third country finding that sign to be registrable or not registrable as a national trade mark (see judgment of 25 April 2018, Perfumes y Aromas Artesanales v EUIPO – Aromas Selective (Aa AROMAS artesanales), T‑426/16, not published, EU:T:2018:223, paragraph 114 and the case-law cited; judgment of 15 February 2023, Topcart v EUIPO – Carl International (TC CARL), T‑8/22, not published, EU:T:2023:70, paragraph 78). 118 The applicant submits that that refusal makes it impossible to manufacture the goods concerned in Switzerland under the contested mark. However, such a consequence does not follow from the operative part of that refusal or from its statement of reasons. In particular, the possibility of manufacturing the goods concerned in Switzerland with the abovementioned sign for export to the EU market does not appear to be affected in any way. The documents in question, as such, relate only to the reasons for the refusal to register that sign in Switzerland. 119 So far as is relevant, the rules to which the Federal Institute of Intellectual Property referred in arriving at that refusal also do not support the conclusion that the mere manufacture of the goods concerned under the contested mark in Switzerland is prohibited. 120 First, the provisional refusal refers to Article 6quinquies B(2) and (3) of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended, which provides for certain absolute grounds for denial of registration and corresponding grounds for invalidity of trade marks. 121 Second, that provisional refusal refers to Article 2(a) and (c), Article 30(2)(c) and Article 47 et seq. of the Swiss Federal Law on the Protection of Trade Marks and Indications of Source. Extracts from that law were provided by the applicant during the proceedings before the Board of Appeal. Article 2 of that law relates to the absolute grounds for refusal of registration of trade marks. Article 30(2)(c) thereof was not provided by the applicant. As regards the final reference in the provisional refusal, the applicant has provided Articles 47 to 55 of that law concerning indications of source. Article 47(3) of that law prohibits the use of incorrect indications of source (point (a)), designations that may be confused with an incorrect indication of source (point (b)) and names, company names, addresses or trade marks associated with goods or services of a different origin where this could be misleading (point (c)). However, the applicant did not provide the version in force on the relevant date. The version which it provided indicates that its entry into force was 1 January 2017 and that Article 47(3)(c) of that law was amended. In any event, in the version applicable as from 2017, that law prohibits inter alia the use of trade marks which are of such a nature as to deceive with respect to the geographical origin of goods or services. As regards points (a) and (b) of paragraph 3 of that article, it is not clear which type of use of a trade mark is prohibited. So far as concerns foreign law, to which the principle of iura novit curia does not apply, it was for the applicant to substantiate its claim further and, if necessary, to explain the scope of the Swiss legislation. However, in its written pleadings before the Court, it does not engage in an analysis of the Swiss legislation in that field in force on the relevant date. In those circumstances, and on the whole, it appears that, if the goods concerned were actually being manufactured in Switzerland on the relevant date, the Swiss legislation would not preclude a sign referring to their origin in that country from being affixed to those goods. However, the legislation in question would not allow that sign to enjoy protection as a trade mark. 122 Lastly, and in any event, as the contested mark is an EU trade mark, Article 51(1)(a) and Article 7(1)(g) of Regulation No 40/94, infringement of which is alleged in the present plea, do not preclude those goods from being manufactured in Switzerland and the contested mark from being affixed to them following their import into the European Union, which is consistent with the Board of Appeal’s conclusion, in paragraph 41 of the contested decision, that all the goods in respect of which the contested mark enjoys protection may be produced in Switzerland. 123 Furthermore, it is irrelevant that the Board of Appeal, in paragraph 45 of the contested decision, analysed the Swiss legislation relating to ‘Swissness’, as that legislation was not adopted until well after the relevant date, namely in 2013. 124 In the fifth place, as regards the arguments based on the application of Article 3bis of the Madrid Agreement, which, together with the list of Contracting States to that agreement, is set out in Annexes A.24 and A.25 to the application, it has already been held that those annexes are inadmissible in the present action (see paragraph 20 above). In any event, the European Union is not a contracting party to that international agreement. On the relevant date, namely 2 July 2003 (see paragraph 98 above), only 8 of the 15 Member States at the time were contracting parties to the Madrid Agreement. It is therefore not possible to envisage applying by analogy the approach adopted with regard to the General Agreement on Tariffs and Trade (GATT) in paragraphs 10 to 18 of the judgment of 12 December 1972, International Fruit Company and Others (21/72 to 24/72, EU:C:1972:115), and recalled in Opinion 2/15 (Free Trade Agreement with Singapore) of 16 May 2017 (EU:C:2017:376, paragraph 248). It cannot therefore be binding on the European Union and on its institutions and bodies. 125 Moreover, Article 3bis of the Madrid Agreement adds nothing to Article 7(1)(g) and Article 51(1)(a) of Regulation No 40/94 as regards the application of the absolute ground for invalidity based on the misleading nature of a trade mark. Article 3bis of that agreement provides that ‘the countries to which [that] Agreement applies also undertake to prohibit the use, in connection with the sale or display or offering for sale of any goods, of all indications in the nature of publicity capable of deceiving the public as to the source of the goods, and appearing on signs, advertisements, invoices, wine lists, business letters or papers, or any other commercial communication.’ Its objective is, in essence, to prohibit the marketing of goods covered by trade marks which are of such a nature as to deceive the public as to the origin of the goods, and not to prohibit the registration of such marks, or even to define the conditions for declaring them invalid. 126 That agreement is therefore not relevant with regard to the outcome of the present case. 127 In the sixth place, it is appropriate to assess a number of the applicant’s arguments put forward in its second plea, but which in fact concern the third plea. 128 First, the complaint based on the alleged failure to take into account the fact that the intervener had never claimed that it manufactured or intended to manufacture the relevant goods in Switzerland must also be rejected because the Board of Appeal had to ascertain whether, on the relevant date, there was any inconsistency between the information which the contested mark conveyed and the characteristics of the goods designated in the application for registration of that mark (see paragraphs 108 and 112 above). The application of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(g) thereof, therefore presupposes that the sign is inherently misleading in relation to the list of goods or services covered. 129 Second, as regards the observations submitted by the applicant before the Cancellation Division and before the Fifth Board of Appeal, including those relating to the alleged misleading nature of the contested mark, it must be held that the applicant does not point out any specific argument which the Board of Appeal incorrectly assessed. According to the case-law, it is not for the Court to seek and identify in the annexes the pleas and arguments on which it may consider the action to be based, since the annexes have a purely evidential and instrumental function (judgment of 3 March 2022, WV v EEAS, C‑162/20 P, EU:C:2022:153, paragraph 70). 130 Third, as regards the alleged incorrect assessment of Annex 5bis to the application for a declaration of invalidity showing packaging of a product of the intervener, and of the survey in Annexes 6, 6bis and 6ter filed by the applicant before the Cancellation Division and reproduced in Annexes A.12 and A.13 to the application, in so far as it is claimed that those documents should have led the Board of Appeal to find that interested customers were misled by the contested mark and thought that the goods bearing that mark came from Switzerland, although they are not manufactured there, it suffices to point out that it has been stated that, in paragraphs 41 to 45 of the contested decision, the Board of Appeal examined whether the contested mark was deceptive on the relevant date in the event that the relevant public would understand the mark as referring to the Swiss origin of the goods concerned (see, inter alia, paragraphs 83 to 104 above). It must also be recalled that the Board of Appeal had to ascertain whether, on the relevant date, there was any inconsistency between the information which the contested mark conveyed and the characteristics of the goods designated in the application for registration of that mark. 131 Fourth, as regards (i) Annexes 14 to 92 to the pleadings submitted by the applicant before EUIPO, contained in Annexes A.12 and A.13 to the application, for the purpose of demonstrating the reputation of Swiss food supplements in the health/wellness/beauty sector, the connection between those goods and the cosmetics sector, and the reputation associated with any term evoking the concept of ‘Swissness’ as an indication of geographical origin, (ii) a document allegedly showing that the goods bearing the contested mark are not produced in Switzerland, and (iii) Annex 5 to the file before the Board of Appeal containing a recording on a USB stick which, it is claimed, demonstrates that the letter ‘e’ at the end of the word element of the contested mark is not pronounced and which is alleged to contradict the finding in paragraph 38 of the contested decision according to which ‘Swisse’ is different from ‘Swiss’, it must be held that that evidence is not, in the present case, relevant to the application of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(g) thereof. 132 Neither the alleged reputation of Swiss food supplements nor that of Switzerland as a place of production nor the connection between food supplements and the cosmetics sector play a role in the assessment which the Board of Appeal must carry out in the context of those provisions, namely the ascertainment of whether there was, on the relevant date, any inconsistency between the information which the contested mark conveyed and the characteristics of the goods designated in the application for registration of that mark (see paragraphs 108 and 112 above). Nor does the audio file provided by the applicant in order to demonstrate that the pronunciation of the word element of the contested mark is identical to the pronunciation of ‘suisse’ or ‘swiss’ add anything to the present examination, given that it is apparent from paragraphs 41 to 45 of the contested decision that the Board of Appeal analysed, in the alternative, the ground for invalidity based on the alleged misleading nature of the contested mark in the event that it will be perceived as referring to the Swiss origin of the goods concerned. 133 It follows from all of the foregoing that the third plea in law must be rejected. The fourth plea in law 134 According to the applicant, it is apparent from the judgment of 29 June 2022, La Irlandesa 1943 (T‑306/20, EU:T:2022:404, paragraphs 81 to 101), that a mark which is not declared invalid on the basis of deceptiveness may nevertheless be declared invalid on the basis of bad faith, if it is proved that the proprietor of the mark did not intend to use the indication of geographical origin as a trade mark in relation to goods connected to the designated place of origin. The applicant maintains that that is exactly what it alleged in its application for a declaration of invalidity and in its observations in reply before the Cancellation Division. 135 The applicant submits that the case-law has made it clear that any parasitic intent, including the intent to use an indication of geographical origin as a trade mark in relation to products with no connection to the designated geographical origin, results in the invalidity of the trade mark in question for bad faith. 136 It argues that, contrary to what the Board of Appeal states in paragraph 52 of the contested decision, the ground for invalidity based on bad faith is therefore not a repetition of the ground for invalidity based on deceptiveness. Indeed, the applicant claims that, on the relevant date, the intervener would necessarily have been aware that ‘Swiss’ was the most prestigious and most valuable indication of source in the world and that the contested mark, used to designate goods which are not manufactured in Switzerland, took unfair advantage of the reputation of Swiss quality products in general and of Swiss energy, health, wellness and skincare goods and services in particular. 137 It submits that the unfair exploitation of the ‘Swissness’ concept is also proved by the statement on the intervener’s website, which acknowledges that the founder of the intervener’s predecessor in law became aware of that concept’s reputation in that field during his trip to Switzerland in the 1960s. 138 According to the applicant, the extract from the intervener’s website, contained in Annex 10 filed by the applicant before EUIPO, proves that, even on the relevant date, production was taking place only in Australia. Furthermore, it maintains that, when the intervener started, more than 10 years after the relevant date, to market the products concerned bearing the contested mark in Italy, those goods were never manufactured in Switzerland. Thus, in the applicant’s submission, the intervener never intended to manufacture the products concerned in Switzerland. Consequently, it argues, the intervener wished only to take unfair advantage of the Swiss indication of source, which constitutes registration in bad faith. 139 EUIPO and the intervener dispute the applicant’s arguments. 140 Article 51(1)(b) of Regulation No 40/94 provides that an EU trade mark is to be declared invalid on application to EUIPO or on the basis of a counterclaim in infringement proceedings where the applicant was acting in bad faith when he or she filed the application for the trade mark. 141 While, in accordance with its usual meaning in everyday language, the concept of ‘bad faith’ presupposes the presence of a dishonest state of mind or intention, that concept must also be understood in the context of trade mark law, which is that of the course of trade. In that regard, Regulation No 40/94, Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) and Regulation 2017/1001, which were adopted successively, have the same objective, namely the establishment and functioning of the internal market. The rules on the EU trade mark are aimed, in particular, at contributing to the system of undistorted competition in the European Union, in which each undertaking must, in order to attract and retain customers through the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin (see judgment of 28 October 2020, Target Ventures Group v EUIPO – Target Partners (TARGET VENTURES), T‑273/19, EU:T:2020:510, paragraph 25 and the case-law cited). 142 The intention of an applicant for a trade mark is a subjective factor which must, however, be determined objectively by the competent administrative and judicial authorities. Consequently, any claim of bad faith must be the subject of an overall assessment, taking into account all the factual circumstances relevant to the particular case. It is only in that manner that a claim of bad faith can be assessed objectively (see judgment of 28 October 2020, TARGET VENTURES, T‑273/19, EU:T:2020:510, paragraph 33 and the case-law cited). 143 The factors taken into account by the case-law in the context of the global analysis undertaken pursuant to Article 51(1)(b) of Regulation No 40/94 include, 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 or service 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 signs at issue, the applicant’s intention to prevent a third party from marketing a product, the origin of the contested sign and how it has been used since it was created, the commercial logic of which the filing of the application for registration of the sign as an EU trade mark forms a part, and the chronology of events relating to the filing (judgment of 21 February 2024, Dendiki v EUIPO – D-Market (hepsiburada), T‑172/23, not published, EU:T:2024:105, paragraph 26). 144 It is apparent from the case-law that, since the various factors are only examples drawn from a number of factors which can be taken into account in order to determine whether an applicant for registration was acting in bad faith at the time of filing the trade mark application, the fact that any one of those factors is not present does not necessarily preclude, depending on the particular circumstances of the case, a finding that the applicant acted in bad faith (see judgment of 28 October 2020, TARGET VENTURES, T‑273/19, EU:T:2020:510, paragraph 31 and the case-law cited). 145 The Court of Justice has also stated that the applicant for a trade mark is not required to indicate or even to know precisely, on the date on which his or her application for registration of a mark is filed or of the examination of that application, the use he or she will make of the mark applied for and he or she has a period of five years for beginning actual use consistent with the essential function of that trade mark (judgment of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 76). 146 However, the registration of a trade mark by an applicant without any intention to use it in relation to the goods and services covered by that registration may constitute bad faith, where there is no rationale for the application for registration in the light of the aims referred to in Regulation No 40/94 and First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1). Such bad faith may, however, be established only if there is objective, relevant and consistent indicia tending to show that, when the application for registration of a trade mark was filed, the trade mark applicant had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark (judgment of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 77). 147 The bad faith of the trade mark applicant cannot, therefore, be presumed on the basis of the mere finding that, at the time of filing his or her application, that applicant had no economic activity corresponding to the goods and services referred to in that application (judgment of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 78). 148 In addition, it is for the applicant for a declaration of invalidity who intends to rely on Article 51(1)(b) of Regulation No 40/94 to prove the circumstances which make it possible to conclude that an application for registration of an EU trade mark was filed in bad faith, the good faith of the trade mark 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; see judgment of 21 February 2024, hepsiburada, T‑172/23, not published, EU:T:2024:105, paragraph 27 and the case-law cited). 149 Where the objective circumstances of the particular case which were relied on by the applicant for a declaration of invalidity may lead to the rebuttal of the presumption of good faith which the proprietor of the mark at issue enjoys when he or she files the application for registration of that mark, it is for the proprietor of that mark to provide plausible explanations regarding the objectives and commercial logic of the application for registration of that mark. The proprietor of the trade mark at issue is best placed to provide EUIPO with information regarding his or her intentions at the time of applying for registration of that mark and to provide it with evidence capable of convincing it that, in spite of the existence of objective circumstances, those intentions were legitimate (see judgment of 21 February 2024, hepsiburada, T‑172/23, not published, EU:T:2024:105, paragraph 28 and the case-law cited). 150 In the present case, it must be observed that, in so far as the Board of Appeal appears, in paragraph 53 of the contested decision, to have inferred the absence of bad faith on the part of the trade mark applicant from the rejection of the ground based on the misleading nature of that mark, such reasoning would be incorrect (see, to that effect and by analogy, judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 97). 151 However, the Board of Appeal, in any event, also pointed out, in paragraph 54 of the contested decision, that the applicant had not shown that, on the date when the application for registration of the contested mark was filed, there was an intention on the part of the trade mark applicant to market under that mark goods which had no connection with Switzerland. 152 In that regard, the applicant submits that it has proved that the intervener did not wish, on the relevant date, to use the contested mark in respect of goods manufactured in Switzerland, but rather that it intended to take unfair advantage of Switzerland’s reputation in relation to the manufacture of goods, in particular in the field to which the goods concerned belong. 153 However, without it being necessary to rule on Switzerland’s reputation in that field, it is apparent from the case-law cited in paragraphs 145 to 147 above that the applicant’s line of argument cannot succeed. On the relevant date, the intervener was not even required to know precisely the use that it would make of the contested mark. Nor has the applicant claimed, let alone demonstrated, that the intervener had no intention to use the contested mark in relation to the goods covered by that registration. 154 Moreover, the applicant has not demonstrated to the requisite legal standard that the intervener did not intend, on the relevant date, to manufacture the goods concerned in Switzerland. It has been established only that those goods had not been produced there. 155 Nor has the applicant put forward any evidence that the intervener intended to pass off the goods concerned that it manufactures as goods originating in Switzerland, even though they are not produced there. 156 Although the intervener acknowledged before the Cancellation Division that the contested mark could evoke Switzerland – which, moreover, it denied before the Fifth Board of Appeal – it contends that the contested mark does not refer to any Swiss origin of the goods concerned. 157 In any event, as the intervener, in essence, contends, the extracts from its website are not capable of demonstrating a dishonest intention on its part, since the goods concerned may be inspired by Swiss formulas or contain ingredients originating from Switzerland, which is in fact consistent with the Board of Appeal’s finding in paragraph 54 of the contested decision that there is also no evidence on file that the intervener planned, on the relevant date, to market under the contested mark goods which had no connection with Switzerland. Rather, the extracts from the intervener’s website show the inspiration which the founder of the intervener’s predecessor in law had during his trip to Switzerland in the 1960s (see, to that effect and by analogy, judgment of 29 November 2018, Khadi, T‑681/17, not published, EU:T:2018:858, paragraph 51). 158 The fourth plea in law must therefore be rejected. 159 As regards the second head of claim by which the applicant asks the Court to uphold the application for a declaration of invalidity of the contested mark, it is apparent from the case-law that such a request is inadmissible (judgment of 5 November 2019, APEDA v EUIPO – Burraq Travel & Tours General Tourism Office (SIR BASMATI RICE), T‑361/18, not published, EU:T:2019:777, paragraphs 73 to 75). 160 It follows that the action must be dismissed in its entirety. Costs 161 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. 162 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (Third Chamber) hereby: 1. Dismisses the action; 2. Orders Giuliani SpA to pay the costs. Nõmm Steinfatt Kukovec Delivered in open court in Luxembourg on 2 April 2025. V. Di Bucci M. van der Woude Registrar President * Language of the case: English.