Judgment — ECLI:EU:T:2017:458
Date: 2017-06-29
Language of the case: English
Court formation: Sixth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Italy

Summary — Judgment of the General Court (Sixth Chamber), 29 June 2017 1. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Applicant in bad faith when lodging the trade mark application — Criteria for assessment — Taking into account of all relevant factors at the time of filing the application for registration — Applicant’s knowledge that a third party is using an identical or similar sign — Intention of the applicant — Degree of legal protection of the signs at issue — Origin and use of the sign in dispute — Commercial logic underlying the registration of the contested sign as an EU trade mark — Chronology of events characterising the filing of the trade mark application (Council Regulation No 207/2009, Art. 52(1)(b)) 2. EU trade mark — Procedural provisions — Statement of reasons for decisions — Article 75, first sentence, of Regulation No 207/2009 — Scope identical to that of Article 296 TFEU (Art. 296 TFEU; Council Regulation No 207/2009, Art. 75, first sentence) 3. EU trade mark — Definition and acquisition of the EU trade mark — Assessment of the registrability of a sign — EU rules only taken into account — Decisions of national authorities not binding EU bodies (Council Regulation No 207/2009) 4. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Applicant in bad faith when lodging the trade mark application — Word mark CIPRIANI (Council Regulation No 207/2009, Art. 52(1)(b)) 5. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Use of the mark capable of being prohibited by virtue of another earlier right — Right to the name — Word mark CIPRIANI (Council Regulation No 207/2009, Art. 53(2)(a)) 1. The EU trade mark system is based on the principle, laid down in Article 8(2) of Regulation No 207/2009, that an exclusive right is granted to the person who is first to file. In accordance with that principle, a sign may be registered as an EU trade mark only in so far as it is not precluded by an earlier mark, whether an EU trade mark, a trade mark registered in a Member State or by the Benelux Office for Intellectual Property, a trade mark registered under international arrangements which have effect in a Member State or a trade mark registered under international arrangements which have effect in the European Union. By contrast, without prejudice to the possible application of Article 8(4) of Regulation No 207/2009, the mere fact that a non-registered mark is used by a third party does not preclude an identical or similar mark from being registered as an EU mark for identical or similar goods or services. The application of that principle is qualified, inter alia, by Article 52(1)(b) of Regulation No 207/2009, under which an EU trade mark must 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 filed the application for registration of the trade mark. It is for the applicant for a declaration of invalidity who intends to rely on that ground to establish the circumstances which make it possible to conclude that the proprietor of an EU trade mark was acting in bad faith when he 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 the legislation. In the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361), the Court of Justice provided some clarification regarding the way in which the concept of bad faith, as referred to in Article 52(1)(b) of Regulation No 207/2009, should be interpreted. According to the Court of Justice, in order to determine whether the applicant for registration acted 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 which obtained at the time of filing the application for registration of a sign as an EU trade mark, in particular: (i) 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; (ii) the applicant’s intention to prevent that third party from continuing to use such a sign; and (iii) the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought. Nonetheless, it is apparent from the wording used by the Court of Justice in that judgment that the factors listed are only examples drawn from a number of factors which can be taken into account in order to decide whether an applicant for registration was acting in bad faith at the time when the trade mark application was filed. 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 contested sign and its use since its creation, the commercial logic underlying the filing of the application for registration of that sign as an EU trade mark, and the chronology of events leading up to that filing. (see paras 23-29) 2. In accordance with Article 75 of Regulation No 207/2009, decisions of EUIPO must state the reasons on which they are based. That obligation to state reasons, which also derives from Article 296 TFEU, has been the subject of settled case-law according to which the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable, first, the persons concerned to exercise effectively their right to request judicial review of the contested decision and, secondly, the EU judicature to exercise its power to review the legality of the decision. (see para. 34) 3. Whilst EUIPO is not bound by decisions given by national authorities, EUIPO may nevertheless take those decisions into consideration, without them being binding or even determinative, as indicia in the assessment of the facts of the case. (see para. 38) 4. See the text of the decision. (see paras 41-69) 5. See the text of the decision. (see paras 75-107)