Judgment — ECLI:EU:T:2012:689
Date: 2012-12-13
Language of the case: English
Court formation: Fifth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Slovakia

summary form, coherently and intelligibly in the application itself. In that regard, although the body of the application may be supported and supplemented on specific points by references to extracts from documents annexed thereto, a general reference to other documents, even those annexed to the application, cannot make up for the absence of the essential arguments in law which, in accordance with the relevant provisions, must appear in the application. Accordingly, to the extent that the applicant makes no specific reference to particular paragraphs of its written submissions in which the arguments put forward in the proceedings before OHIM are set out, the general references to those written submissions must be declared inadmissible (see, to that effect, judgment of 12 July 2012 in Case T‑346/09 Winzer Pharma v OHIM – Alcon (BAÑOFTAL), not published in the ECR, paragraph 43 and the case-law cited). Documents put forward for the first time before the General Court 18 In order to substantiate its claim that Pelikan would try to prevent third parties from using the word ‘pelikan’, the applicant annexed to the reply the application for revocation of the Slovakian trade mark pelikan, registered under No 214680, which Pelikan had filed with the Úrad priemyselného vlastníctva Slovenskej republiky (Industrial Property Office of the Slovak Republic) on 18 June 2008. 19 That document, produced for the first time before the General Court, cannot be taken into account. The purpose of actions before the Court is to secure review of the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009 and, accordingly, the role of the Court is not to re-evaluate the facts in the light of documents produced for the first time before it. The abovementioned document must therefore be disregarded, without the necessity of assessing its probative value (see, to that effect, Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 19 and the case-law cited). Substance 20 The applicant claims that neither the facts of the case nor the evidence submitted were correctly assessed by the Board of Appeal, which therefore erred in law in finding that the application for registration of the contested Community trade mark had not been filed in bad faith. 21 Under Article 52(1)(b) of Regulation No 207/209, a Community trade mark must be declared invalid, on application to OHIM or on the basis of a counterclaim in infringement proceedings, where the applicant for registration was acting in bad faith at the time of filing 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 been acting in bad faith when it filed the application for registration of that mark (see Case T‑33/11 Peeters Landbouwmachines v OHIM – Fors MW (BIGAB) [2012] ECR II‑0000, paragraph 17). 22 In Case C‑529/07 Chocoladefabriken Lindt & Sprüngli [2009] ECR I‑4893, paragraph 53, the Court of Justice added that, in order to determine whether the applicant is acting in bad faith for the purposes of Article 52(1)(b) of Regulation No 207/2009, account must be taken of all the relevant factors specific to the particular case and, in particular, of the following, where applicable: – the fact that the applicant knows or should know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product liable to be confused with the sign for which registration is sought; – the applicant’s intention of preventing 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. 23 The applicant’s first submission is essentially that, as the contested Community trade mark is practically identical to the earlier Community trade marks and covers the services in Classes 35 and 39 in respect of which Community trade mark No 179226 was revoked, the application for registration of that mark amounts to a repeat application intended to prevent loss of the rights attaching to the earlier Community trade marks which had not been actually used. 24 However, according to the applicant, it emerges from the Guidelines relating to proceedings before OHIM (Part D, Section 2, paragraph 4.3.3) that, if the proprietor of a Community trade mark repeatedly files applications for the same figurative mark with the aim of avoiding the consequences of earlier Community trade marks being cancelled, in whole or in part, for non-use, that proprietor will be regarded as acting in bad faith. 25 In that context, the Guidelines relating to proceedings before OHIM, which are published on OHIM’s website, are no more than a consolidated set of rules setting out the line of conduct which OHIM itself proposes to adopt, with the result that, provided that those rules are consistent with legal provisions of higher authority, they constitute a self-imposed restriction on OHIM, namely that of compliance with rules which it has itself laid down. However, those guidelines cannot derogate from Regulation No 207/2009 or from Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1). The question whether, as alleged, the applicant acted in bad faith when filing the application for registration of the Community trade mark must be assessed, therefore, solely in the light of those regulations (see, to that effect, Case T‑410/07 Jurado Hermanos v OHIM (JURADO) [2009] ECR II‑1345, paragraph 20]. 26 However, as paragraphs 21 and 22 above reveal, the concept of ‘bad faith’ has not been defined in Regulation No 207/2009 but it has been interpreted by the Court of Justice. In that regard, it should be pointed out that the three factors set out in paragraph 22 above are only examples of factors which can be taken into account in order to decide whether the applicant was acting in bad faith at the time of filing the application (BIGAB, paragraph 20). 27 Accordingly, it is possible that, where the proprietor of a Community trade mark files a repeat application for the same mark in order to avoid the consequences entailed by total or partial revocation of earlier trade marks for reasons of non-use, that fact is something which may be taken into account in order to assess whether the proprietor acted in bad faith. Furthermore, that reading coincides with the interpretation adopted in the Guidelines relating to proceedings before OHIM. 28 Consequently, it must be considered whether the Board of Appeal correctly assessed the question as to whether the contested Community trade mark constituted a repeat application for earlier Community trade marks in order to avoid loss of the rights attaching to those marks. 29 First, on the issue as to whether the earlier Community trade marks and the contested Community trade mark are identical, the Board of Appeal considered the differences between those marks – ‘a different font, a somewhat different “pelican” and a different amount of chicks’– to be insignificant in that the contested Community trade mark ‘differs in elements that do not alter the distinctive character of [earlier Community trade marks]’; however, it added that ‘this does not automatically mean that the second application is a (repetitive) application made in bad faith’ (paragraph 32 of the contested decision). 30 It is settled law that a sign is identical to a trade mark where it reproduces, without any modification or addition, all the elements constituting that trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by the average consumer (Case C‑291/00 LTJ Diffusion [2003] ECR I‑2799, paragraph 54, and Case T‑103/11 Shang v OHIM (justing) [2012] ECR II‑0000, paragraph 16). 31 As regards the comparison between the earlier Community trade marks and the contested Community trade mark, it should be noted that all the signs at issue are composed of the word element ‘pelikan’ and a white figurative element presented against a circular black background, representing an adult pelican leaning over one or two chicks. 32 First, the font of the characters used in the word element ‘pelikan’ differs very little as between the signs at issue, and only the stylisation of the ‘p’ and the ‘k’ – which varies between those signs – could catch the attention of the average consumer. Secondly, in the figurative element, although the number of chicks (two chicks in the earlier Community trade marks and one chick in the contested Community trade mark), the shape of the chicks and the representation of the adult pelican are different, the overall impression given by that element of the signs at issue is very similar. 33 It must therefore be held that, considered as a whole, the differences between the signs at issue are so insignificant as not to be noticeable by the average consumer. 34 However, as the Board of Appeal pointed out in paragraph 32 of the contested decision, that fact alone cannot establish that the contested Community trade mark is a mere repeat application, made by Pelikan in bad faith. 35 In that connection, as the Board of Appeal observed in paragraph 33 of the contested decision, the extract from Pelikan’s 2003 annual report reveals that it was on the 125th anniversary of the creation of its mark PELIKAN that Pelikan decided to modernise that mark and consequently decided to file the contested Community trade mark. 36 Accordingly, the contested Community trade mark is a version of Pelikan’s earlier Community trade marks which has been updated, with some differences from the earlier trade marks. Its structure is identical, however, which means that Pelikan can be sure that consumers can make a link between the earlier Community trade marks and that new mark. The evolution over time of a logo intended as the graphic representation of a mark constitutes normal business practice, as the Board of Appeal points out, in substance, in paragraph 32 of the contested decision. 37 Furthermore, since the contested Community trade mark covers the goods and the services designated by the two earlier Community trade marks, a possible reason for Pelikan to register the contested Community trade mark was to avoid the need to organise, in the future, the renewal of two separate marks – a point which the Board of Appeal made in paragraph 37 of the contested decision. 38 The applicant’s contention that such an approach is inconsistent with the ‘common trade mark strategy’ – that is to say, the strategy of maintaining the validity of the oldest trademarks so that third parties cannot assume proprietorship of the oldest mark on grounds of non-renewal of that mark – cannot succeed. 39 As it is, the earlier Community trade marks were renewed in 2006 (paragraphs 2 and 3 of the contested decision), two years before the registration of the contested Community mark was published on 21 May 2008, the date on which the right conferred by the Community trade mark became enforceable against third parties by virtue of Article 9(3) of Regulation No 207/2009. 40 Consequently, Pelikan was careful to safeguard its rights by renewing the earlier Community trade marks until such time as the publication of the registration of the contested Community trade mark could take effect. 41 Furthermore, as Pelikan correctly points out, only the proprietor can assess whether it is reasonable and meaningful to seek registration of a Community trade mark which differs from its earlier Community trade marks, those differences being linked to the evolution of its company logo. 42 Next, as regards the services at issue and, in particular, the applicant’s contention that the contested Community trade mark was only registered to avoid the loss of rights attaching to Community trade mark No 179226 for the services in Classes 35 and 39, it should be noted that – as the Board of Appeal found in paragraph 36 of the contested decision – when filing the application for registration of the contested Community trade mark, Pelikan specified the services in Classes 35 and 39 which it intended that new mark to cover, instead of using the class headings, as it had done in the case of Community trade mark No 179226. That list of services was accordingly more specific and, consequently, less wide-ranging than the list of services covered by Community trade mark No 179226. 43 However, 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 sign at issue and its use since its creation, and of the commercial logic underlying the filing of the application for registration of that sign as a Community trade mark (BIGAB, paragraph 21). 44 The Board of Appeal specified in that regard that, ‘although the existence of [earlier] Community trade marks may be factors to take into account [to assess whether] [the contested Community trade mark] [was] filed in bad faith, it is the filing of the [application for registration] which is at issue in the case at hand, not the filing or existence of [the earlier Community trade marks]’ (paragraph 40 of the contested decision). The Board of Appeal considered, however, that the claim that, ‘for 10 years, which is since registration of the [Community trade mark No 179226] in 1998 [and] until 2008, [Pelikan] has not offered Class 35 and 39 services to third persons’ was perhaps true, but that ‘such a conclusion [could not] be drawn from the facts, evidence and arguments in the file’ (paragraph 42 of the contested decision) and stated that ‘the revocation, as from the date of the application for revocation (1 October 2008) of [Community trade mark No 179226], [could not] serve to establish [Pelikan’s] intention of use or bad faith at the time of filing the application for registration of [the contested Community trade mark] (22 August 2003)’ (paragraph 44 of the contested decision). 45 It should be noted in that connection that, even though Community trade mark No 179226 was revoked for the services in Classes 35 and 39, that fact is not, in itself, sufficient to enable conclusions to be drawn as to Pelikan’s intentions at the time of filing the application for registration of the contested Community trade mark. 46 Although the applicant contends that Pelikan does not currently provide services to third parties and has not done so since 1998, it has not produced any evidence to show that the application for the contested Community trade mark for the services in Classes 35 and 39 was bogus and made no commercial sense for Pelikan (see, to that effect, BIGAB, paragraph 26). 47 Furthermore, as the applicant admits in the response, at the time of filing the application for registration of the contested Community trade mark, Pelikan had no objective reason to believe that a request would be made five years later for the revocation of Community trade mark No 179226. 48 Lastly, the applicant’s claims that Pelikan nevertheless could have expected that a request would be made for Community trade mark No 179226 to be revoked for non-use – because it knew that the period of grace was going to expire, and it had not used nor had any intention of using that trade mark – are not supported by any specific evidence and, accordingly, are merely speculation as to Pelikan’s behaviour and intentions, which is insufficient to establish bad faith on Pelikan’s part. 49 Furthermore, as the Board of Appeal correctly points out in paragraph 36 of the contested decision, since the list of services in Classes 35 and 39 covered by the contested Community trade mark has been updated as compared with the list of services in Classes 35 and 39 covered by Community trade mark No 179226, it is conceivable that Pelikan decided to direct its commercial policy towards services in which it was interested or which might interest it in the near future. 50 Consequently, the contested Community trade mark cannot be regarded as a mere repeat application made in bad faith for the sole purpose of avoiding the consequences of revocation of Community trade mark No 179226, in particular for the services in Classes 35 and 39. That conclusion cannot be called into question by the fact, mentioned by the applicant, that Pelikan filed the application for registration of the contested Community trade mark three months before the expiry of the period of grace for the earlier Community trade marks. 51 Such a matter is not sufficient to counteract the abovementioned factors, which show that Pelikan’s intention was, first and foremost, to file a modernised trade mark covering an updated list of services. 52 The applicant’s second submission is essentially that the length of the list of services in Classes 35 and 39 for which the contested Community trade mark has been registered, together with the fact that Pelikan has been unable to show use of the contested Community trade mark for the services in Classes 35 and 39, shows that the intervener acted in bad faith. 53 According to the applicant, it follows from all the above that Pelikan would try to prevent third parties from marketing services which it nevertheless did not provide itself, which is evidence of bad faith. 54 As regards the applicant’s argument that the range of proposed services in Classes 35 and 39 is too wide, the Board of Appeal was correct in stating, in paragraph 41 of the contested decision, that ‘the mere registration of a large variety of goods and services as such is a rather common practice of companies trying to obtain a (Community) trade mark registration; it does not involve conduct that departs from accepted principles of ethical behaviour or honest commercial and business practices’. As a rule, it is legitimate for an undertaking to seek registration of a mark, not only for the categories of goods and services which it markets at the time of filing the application, but also for other categories of goods and services which it intends to market in the future (BIGAB, paragraph 25). 55 Furthermore, neither Regulation No 207/2009 nor the case-law provides any basis for making a finding of bad faith because of the length of the list of goods and services set out in the application for registration (judgment of 7 June 2011 in Case T‑507/08 Psytech International v OHIM – Institute for Personality & Ability Testing (16PF), not published in the ECR, paragraph 88). That argument must therefore be rejected. 56 As regards the applicant’s argument that Pelikan is trying to prevent third parties from marketing services which it does not provide itself, it should be noted that, in paragraph 43 of the judgment in Chocoladefabriken Lindt & Sprüngli, the Court of Justice stated that the intention to prevent a third party from marketing a product may, in certain circumstances, be an element of bad faith on the part of an applicant for registration of a trade mark. That is the case particularly where it subsequently becomes apparent that the applicant has had the sign registered as a Community trade mark with no intention of using it, its sole objective being to prevent a third party from entering the market (BIGAB, paragraph 19). 57 It should first be observed that, as the Board of Appeal correctly stated in paragraph 27 of the contested decision, and as is clear from the case-law cited in paragraph 21 above, there is a presumption of good faith until proof to the contrary is adduced. Thus, contrary to the applicant’s contention, Pelikan was not required to prove use of the contested Community trade mark. 58 Furthermore, in determining whether there was bad faith, it is not a matter of examining the use which has been made of a contested Community trade mark, but rather of assessing whether, at the time of filing the application for its registration, it was intended to make use of a Community trade mark. 59 It should be noted that acceptance of the applicant’s argument concerning use of the contested Community trade mark would mean that the five-year grace period, granted to every registered Community trade mark under Regulation No 207/2009, would be divested of all practical effect. 60 Moreover, as established in paragraphs 46 to 49 above, the applicant has not produced sufficient evidence to prove that Pelikan had no intention of using the contested Community trade mark; nor has the applicant demonstrated that Pelikan’s intention was to prevent a third party from entering the market. 61 The applicant’s third submission is that the sole reason for filing the Community trade mark for services in Classes 35 and 39 was the dishonest intention of preventing other entities from engaging in an activity within the European Union under the figurative mark ‘PELIKAN’, of which the word element ‘pelikan’ is a word frequently used for trading purposes by numerous businesses. The applicant argues that the contested trade mark is, at least partially, a ‘blocking, speculative’ trade mark. The applicant refers, in that regard, to the filing of applications for declarations of invalidity in relation to all the applicant’s Slovakian trade marks containing the word ‘pelikan’. 62 It should be noted that, given that the Board of Appeal endorsed the Cancellation Division’s decision of 30 September 2009 in its entirety, and in view of the continuity in terms of function between the Cancellation Divisions and the Boards of Appeal, to which Article 64(1) of Regulation No 207/2009 attests, that decision, together with the related statement of reasons, forms part of the context in which the contested decision was adopted, a context which is known to the applicant and which enables the Court to carry out in full its review of legality (see, to that effect, judgment of 22 May 2012 in Case T‑60/11 Kraft Foods Global Brands v OHIM – fenaco (SUISSE PREMIUM), not published in the ECR, paragraph 29 and the case-law cited). 63 The Cancellation Division stated, in that regard, that the applicant had ‘mentioned other facts, in particular various opposition and other proceedings initiated by [Pelikan] against other parties, including the [applicant], intending to use the sign “PELIKAN” or similar terms in commerce for business activities which [were] not related to those of [Pelikan]’, but that ‘in the absence of any further indications about the legal and factual background of such proceedings, nothing [could] be inferred about [Pelikan’s] intention when filing the Community trade mark in 2003’ (paragraph 12 of the contested decision). 64 In addition, the Board of Appeal made it clear, in paragraph 45 of the contested decision, that ‘[it did] not see why the registration of a common vocabulary word is relevant as regards the question of whether [Pelikan] [had] acted in bad faith in accordance with Article 52(1)(b) of [Regulation No 207/2009]’. 65 The applicant’s arguments concerning Pelikan’s intention of blocking the registration of marks containing the element ‘pelikan’ cannot succeed. While the applicant refers to the filing of applications for declarations that its trade marks containing the element ‘pelikan’ are invalid, it is important to note, not only that those applications are still pending, but also that Article 9(1) of Regulation No 207/2009 clearly establishes that the Community trade mark confers on the proprietor an exclusive right enabling it to prevent all third parties from using any sign which – because it is identical to or similar to the trade mark and because the goods or services covered by the sign are identical to or similar to the goods or services covered by the trade mark – leads to a likelihood of confusion on the part of the public (see judgment of 17 January 2012 in Case T‑522/10 Hell Energy Magyarország v OHIM – Hansa Mineralbrunnen (HELL), not published in the ECR, paragraph 73). 66 Consequently, the filing of applications for declarations that the applicant’s Slovakian trade marks are invalid constitutes the legitimate exercise of Pelikan’s exclusive right, attaching to the registration of the contested Community trade mark, and cannot in itself prove any dishonest intent on Pelikan’s part. Nor does it emerge clearly – either from the application or from the reply – which factual or legal circumstances would show that Pelikan had attempted to use its right in an abusive manner, thus making it possible to find that Pelikan was acting in bad faith when it filed the application for registration of the contested Community trade mark. 67 Moreover, the applicant’s arguments concerning the fact that the word ‘pelikan’ is commonly used in the business sector must be rejected, because that statement is not borne out by specific evidence and, as the Board of Appeal correctly pointed out, that argument is irrelevant in the context of determining whether Pelikan may have acted in bad faith. 68 Accordingly, in the light of all the foregoing, the single plea in law must be rejected as unfounded and, in consequence, the action must be dismissed in its entirety. Costs 69 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. 70 Since pelicantravel.com s.r.o. has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and by Pelikan Vertriebsgesellschaft mbH & Co. KG. On those grounds, THE GENERAL COURT (Fifth Chamber) hereby: 1. Dismisses the action; 2. Orders pelicantravel.com s.r.o. to pay the costs. Papasavvas Vadapalas O’Higgins Delivered in open court in Luxembourg on 13 December 2012. [Signatures] * Language of the case: English.