JUDGMENT OF THE GENERAL COURT (Second Chamber)
30 November 2017 (*)
(EU trade mark — Invalidity proceedings — EU figurative mark STYLO & KOTON — Absolute ground for refusal — Article 52(1)(b) of (EC) Regulation No 207/2009 (now Article 59(1)(b) of (EU) Regulation 2017/1001) — No bad faith)
In Case T‑687/16,
Koton Mağazacilik Tekstil Sanayi ve Ticaret AŞ, established in Istanbul (Turkey), represented by J. Güell Serra and E. Stoyanov Edissonov, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Joaquín Nadal Esteban, residing in Alcobendas (Spain), represented by J. Donoso Romero, lawyer,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 14 June 2016 (Case R 1779/2015-2), relating to invalidity proceedings between Koton Mağazacilik Tekstil Sanayi ve Ticaret and Mr Nadal Esteban,
THE GENERAL COURT (Second Chamber),
composed of M. Prek, President, E. Buttigieg (Rapporteur) and B. Berke, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 23 September 2016,
having regard to the response of EUIPO lodged at the Court Registry on 14 December 2016,
having regard to the response of the intervener lodged at the Court Registry on 12 December 2016,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 25 April 2011, the intervener, Mr Nadal Esteban, lodged 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)).
2        Registration as a mark was sought for the following figurative sign:
3        The services in respect of which registration was sought are, inter alia, in Classes 35 and 41 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; office functions’;
–        Class 39: ‘Transport; packaging and storage of goods; travel arrangement’.
4        The trade mark application was published in Community Trade Marks Bulletin 2011/099 of 26 May 2011.
5        On 26 August 2011, the applicant, Koton Mağazacilik Tekstil Sanayi ve Ticaret AŞ, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the mark applied for in respect of all the services referred to in paragraph 3 above.
6        The opposition was based on the following earlier rights:
–        the earlier Maltese figurative marks registered under numbers 46666 and 46667, reproduced below:
–        international registration No 777048, designating Benelux, Bulgaria, the Czech Republic, Denmark, Germany, Estonia, Greece, Ireland, Spain, France, Italy, Cyprus, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden and the United Kingdom, of the earlier figurative mark reproduced below:
7        The ground relied on in support of the opposition was that specified in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        On 31 October 2013, the Opposition Division upheld in part the action in Case B 1 896 680. It found that there was a likelihood of confusion between the marks at issue in so far as they designated services in Class 35.
9        On 23 June 2014, the Fourth Board of Appeal of EUIPO dismissed the appeal, in Case R 2608/2013-4, and upheld the Opposition Division’s decision of 31 October 2013.
10      On 5 November 2014, the contested mark was registered under No 9917436 for the services in Class 39 referred to in paragraph 3 above.
11      On 5 December 2014, the applicant filed an application for a declaration that that mark was invalid. The ground for invalidity relied on in support of that application was based on the absolute ground for invalidity, referred to in Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001), relating to the bad faith of the intervener when he filed the application for registration of the contested mark.
12      By decision of 25 August 2015, the Cancellation Division rejected the application for a declaration of invalidity in its entirety. It found that, in the absence in particular of any indication as to the intervener’s dishonest intention, the applicant had failed to prove that the intervener had acted in bad faith when filing the trade mark application.
13      On 4 September 2015, 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.
14      By decision of 14 June 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. It took the view that, even if it were established that the contested signs display an undeniable degree of similarity and that the intervener had knowledge of the applicant’s earlier marks, especially since there was a business relationship between the parties in 2004, the intervener had clearly not displayed bad faith when filing the application for registration of the contested mark with respect to marks which cover dissimilar goods and services.
Forms of order sought
15      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to declare the registration of the contested mark invalid;
–        order EUIPO and the intervener to pay the costs.
16      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
17      The intervener contends that the Court should:
–        reject all the requests of the applicant;
–        order the applicant to pay the costs of the proceedings
Law
18      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 52(1)(b) of Regulation No 207/2009.
19      In the first place, the applicant submits that the Board of Appeal was wrong to find, in paragraph 27 of the contested decision, that the goods or services covered by the marks at issue were required to be identical or similar for the purposes of applying Article 52(1)(b) of Regulation No 207/2009, whereas neither that regulation nor the case-law has laid down such a condition. In that context, the Board of Appeal incorrectly observed that ‘the coincidence in the legal protection enjoyed by the marks’ is a condition sine qua non for the successful application of the absolute ground for invalidity set out in Article 52(1)(b) of Regulation No 207/2009.
20      In the applicant’s submission, to allow registration of a former business partner’s mark solely because the goods or services covered by the marks in question are dissimilar would be contrary to the case-law that the existence of bad faith must be the subject of an overall assessment taking into account all the factors relevant to the particular case.
21      The applicant further contends that the Board of Appeal was wrong to place the absolute ground for invalidity, referred to in Article 52(1)(b) of Regulation No 207/2009, on the same footing as the relative ground for invalidity, referred to in Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1) of Regulation No 207/2009, since those grounds require different conditions. In the applicant’s submission, the only relative ground for invalidity which could be placed on the same footing as the absolute ground for invalidity referred to above is that, referred to in Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001), relating to earlier marks enjoying a reputation, which does not require that the goods or services at issue be similar or identical.
22      In the second place, the applicant submits that, in any event, the Board of Appeal was wrong to find that the marks at issue are protected only for dissimilar goods and services. The Board of Appeal should have taken into account all the marks referred to in the application for a declaration of invalidity, including the applicant’s earlier Turkish, Ukrainian and Moroccan figurative marks, which allegedly cover the services of the contested mark. To that end, it suffices that the applicant for a declaration of invalidity has an ‘unregistered right’ in which he has a legitimate right of protection.
23      In the third place, in the applicant’s submission, the Board of Appeal misapplied Article 52(1)(b) of Regulation No 207/2009, in so far as the existence of bad faith does not require that the marks at issue enjoy a reputation whose scope is identical or similar, but depends on whether or not the applicant for the EU trade mark has violated his duty of fairness in relation to the legitimate interests and expectations of the applicant, with whom he had business relations. In the applicant’s submission, the presence of the figurative element ‘koton’ in the contested mark cannot be accepted as a mere coincidence, and necessarily reflects a dishonest intention on the part of the intervener, its former business partner. In this respect, the applicant relies on three additional factors aimed at establishing the intervener’s dishonest intention and therefore his bad faith when filing his trade mark application, namely, first, the fact that he was aware that the applicant used an identical or similar mark covering identical or similar goods and services, second, the fact that the intervener intended to prevent the applicant from using the earlier mark KOTON in Spain by filing an opposition with the Oficina Española de Patentes y Marcas (Spanish Patent and Trade Mark Office) against the international registration No 1171878 regarding that mark, and, third, the fact that the ‘koton’ element had been created and used for the first time by the applicant and that the intervener could not have used that element if he had not been aware of the earlier mark KOTON.
24      Lastly, the contested decision is contrary to EUIPO’s decision-making practice according to which, where a former distributor files an application for registration in relation to a mark identical to that of the applicant for a declaration of invalidity (his former business partner) or displaying similarities with that mark, this amounts to a dishonest intention vis-a-vis that partner and thus registration in bad faith.
25      EUIPO and the intervener dispute the applicant’s arguments.
26      It should be noted, as a preliminary point, that the EU trade mark registration system is based on the ‘first-to-file’ principle laid down in Article 8(2) of Regulation No 207/2009 (now Article 8(2) of Regulation 2017/1001). In accordance with that principle, a sign may be registered as an EU trade mark only in so far as this is not precluded by an earlier mark, whether an EU trade mark, a trade mark registered in an EU Member State or by the Benelux Office for Intellectual Property (BOIP), 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. On the other hand, without prejudice to the possible application of Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001), the mere use by a third party of a non-registered mark does not preclude an identical or similar mark from being registered as an EU trade mark for identical or similar goods or services (see, to that effect, judgment of 9 July 2015, CMT v OHIM — Camomilla (Camomilla), T‑98/13 and T‑99/13, not published, EU:T:2015:480, paragraph 36 and the case-law cited).
27      The application of that principle is qualified, inter alia, by Article 52(1)(b) of Regulation No 207/2009, under which, following an application to EUIPO or on the basis of a counterclaim in infringement proceedings, an EU trade mark is to be declared invalid where the applicant for registration was acting in bad faith when it filed the application for the trade mark (judgment of 14 February 2012, Peeters Landbouwmachines v OHIM) Fors MW (BIGAB), T‑33/11, EU:T:2012:77, paragraph 17). 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 (see judgment of 21 May 2015, Urb Rulmenti Suceava v OHIM — Adiguzel (URB), T‑635/14, not published, EU:T:2015:297, paragraph 30 and the case-law cited).
28      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 (see judgment of 5 July 2016, Bundesverband Souvenir — Geschenke — Ehrenpreise v EUIPO — Freistaat Bayern (NEUSCHWANSTEIN), T‑167/15, not published, EU:T:2016:391, paragraph 51 and the case-law cited).
29      In the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361, paragraph 53), the Court of Justice provided some clarification regarding the way in which bad faith, as referred to in Article 52(1)(b) of Regulation No 207/2009, should be interpreted.
30      According to the Court of Justice, in order to determine whether the applicant for registration is acting in bad faith within the meaning of that provision, it is necessary to 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 an EU trade mark, in particular, the fact that the applicant for registration 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, second, the intention of the applicant for registration to prevent that third party from continuing to use such a sign and, third, the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought (judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraph 53).
31      The Court of Justice has specified that the fact that the applicant for registration knows or must know that a third party been 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 is not sufficient, in itself, to permit the conclusion that the applicant for registration was acting in bad faith, but that consideration must also be given to the intention of the applicant for registration at the time when he files the application for registration. That intention is a subjective factor which must be determined by reference to the objective circumstances of the particular case, and 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 the applicant for registration (judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraphs 40 to 43).
32      It is apparent from the wording used by the Court of Justice in that judgment that the factors set out 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. In that regard, it must 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 commercial logic underlying the filing of the application for registration of the sign as an EU trade mark and the chronology of events leading to that filing. (judgments of 9 July 2015, CMT v OHIM — Camomilla (CAMOMILLA), T‑100/13, not published, EU:T:2015:481, paragraphs 35 and 36, and of 5 July 2016, NEUSCHWANSTEIN, T‑167/15, not published, EU:T:2016:391, paragraph 53).
33      It is in the light of the foregoing considerations that it is appropriate to consider the single plea in law, alleging infringement of Article 52(1)(b) of Regulation No 207/2009.
34      The Board of Appeal found, in paragraph 22 of the contested decision, that the intervener had knowledge of the earlier marks referred to in paragraph 6 above when he filed his application. In that regard, the Board of Appeal found in particular, endorsing the assessment of the Cancellation Division, that the stylised ‘koton’ element, reproduced virtually identically in the marks at issue, is sufficiently original and striking to be able to state beyond reasonable doubt that the intervener had knowledge of the existence of the earlier marks, given the prior business relationships between the parties in 2004. That finding, which is not disputed by the parties, must be upheld.
35      Further endorsing the assessment of the Cancellation Division, the Board of Appeal found, in paragraph 20 of the contested decision, that the signs at issue displayed an undeniable degree of similarity, based on the presence of the distinctive ‘koton’ element, which is reproduced virtually identically in both marks. That finding, which is also not contested by the parties, must be upheld.
36      As regards the similarity of the services at issue, the Board of Appeal found, in paragraph 27 of the contested decision, that the contested mark enjoys a completely dissimilar scope of ‘legal protection’ to that enjoyed by the earlier marks and that, for the successful application of Article 52(1)(b) of Regulation No 207/2009, the applicant for a declaration of invalidity must not only know that a third party is using, in at least one Member State, an identical or similar sign, but also that the sign must be used on identical or similar goods or services capable of being confused with the sign for which registration is sought. Consequently, the Board of Appeal found that the proprietor of the contested mark could not be guilty of bad faith with respect to a mark which covers goods and services dissimilar to those covered by the earlier marks.
37      Primarily, the applicant contests the conclusion in paragraph 27 of the contested decision, according to which a finding of the intervener’s bad faith, pursuant to Article 52(1)(b) of Regulation No 207/2009, is, in the present case, precluded since the goods or services of the marks at issue are not identical or similar.
38      In that regard, it is necessary to observe at the outset, as EUIPO and the applicant do, that the issue of the assessment of the identity or similarity of the goods or services designated by the marks at issue falls, in any event, within the examination of the first factor to take into consideration, in accordance with the case-law mentioned in paragraph 30 above, for the purpose of finding whether the applicant for registration is acting in bad faith, within the meaning of Article 52(1)(b) of Regulation No 207/2009, namely the circumstance that the applicant for registration was aware or should have been aware of the earlier mark used by a third party.
39      In the present case, the Board of Appeal found, in paragraph 26 of the contested decision, that the marks at issue are protected for dissimilar goods and services after referring, in paragraphs 24 and 25 of the contested decision, to the Opposition Division’s decision of 31 October 2013, STYLO & KOTON v KOTON (B 1 896 680), which was upheld by the decision of the Fourth Board of Appeal of 23 June 2014, STYLO & KOTON v KOTON (Case R 2608/2013-4), which had found that there was no similarity between the services of ‘transport; packaging and storage of goods; travel arrangement’, in Class 39, which are covered by the contested mark, and the services of ‘advertising; business management; business administration; office functions; rental of vending machines; auctioneering’, in Class 35, which are covered by the earlier marks. Any likelihood of confusion was thus precluded within the meaning of Article 8(1)(b) of Regulation No 207/2009, the only ground on which that opposition was based. That assessment was not challenged by the applicant and became final in relation to the applicant.
40      Under the case-law referred to in paragraph 30 above, bad faith, within the meaning of Article 52(1)(b) of Regulation No 207/2009, must be assessed, inter alia, in the light of the likelihood of confusion between a sign used by a third party and the sign for which registration is sought, which presupposes identity or similarity not only between the signs, but also between the goods or services in question (judgments of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraph 53; of 14 February 2012, BIGAB, T‑33/11, EU:T:2012:77, paragraph 18, and of 21 March 2012, Feng Shen Technology v OHIM — Majtczak (FS), T‑227/09, EU:T:2012:138, paragraph 33).
41      That interpretation is not called into question by the judgment of 14 February 2012, BIGAB (T‑33/11, EU:T:2012:77), on which the applicant relies in support of its line of argument.
42      In the judgment of 14 February 2012, BIGAB (T‑33/11, EU:T:2012:77, paragraph 32), the General Court held that it matters little whether or not the goods or services marketed are similar or identical, where it has not been proved that the sole purpose of the registration is to prevent the third party from using the mark in question. It follows that, in so far as, in the case which led to the judgment of 14 February 2012, BIGAB (T‑33/11, EU:T:2012:77, paragraph 32), dishonest intention had not been established, it was no longer necessary to examine whether the condition that the goods and services in question be identical or similar had been fulfilled.
43      The applicant is also wrong to complain that the Board of Appeal incorrectly placed the absolute ground for invalidity, referred to in Article 52(1)(b) of Regulation No 207/2009, on the same footing as the relative ground for invalidity, referred to in Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1) of that regulation, which lays down the twofold condition that the signs and goods or services designated by those signs be identical or similar.
44      The Board of Appeal merely applied the case-law, in particular the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361, paragraph 53), according to which bad faith on the part of the applicant for registration presupposes that a third party is using 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.
45      In the alternative, the applicant claims that, even if the goods or services at issue were required to be identical or similar for the purposes of establishing that the applicant for registration was acting in bad faith, the Board of Appeal was, in any event, wrong to find that the marks at issue were protected only for dissimilar goods or services. In that regard, the applicant submits that the Board of Appeal should have taken into account all the marks referred to in support of the application for a declaration of invalidity, including its earlier Turkish, Ukrainian and Moroccan figurative marks, and that, in that context, it was sufficient that it had an unregistered right in which it had a legitimate right of protection, for example under trade mark law or competition law.
46      It should be noted that, under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to the General Court by virtue of Article 53 thereof, and Article 177(1)(d) of the Rules of Procedure of the General Court, an application must set out a summary of the pleas in law on which it is based. That summary must be sufficiently clear and precise to enable the defendant to prepare its defence and the General Court to decide the case, if appropriate without other information in support (see judgment of 29 March 2012, Omya v OHIM — Alpha Calcit (CALCIMATT), T‑547/10, not published, EU:T:2012:178, paragraph 19 and the case-law cited).
47      Inasmuch as the applicant merely stated in its application, first, that EUIPO should have taken account of the ‘unregistered rights’ in respect of which it enjoyed legitimate protection and, second, that the goods and services covered by its earlier marks were not dissimilar to those covered by the contested mark, without however specifying the unregistered rights or mentioning evidence of use of those rights, that line of argument must be rejected.
48      In any event, on the assumption that, by its reference to unregistered rights, the applicant is referring to marks of which it is the proprietor, but which are not registered in the European Union, which include its Turkish, Moroccan and Ukrainian marks, to which it indeed refers expressly in its application, it is sufficient to find that the applicant did not challenge EUIPO’s contention before the Court that the applicant had not proved that that the intervener knew or should have known, when he filed the contested mark, of the claimed use of those marks in a Member State or a third country for allegedly identical or similar goods or services capable of being confused with the contested mark, which is registered for services in Class 39.
49      Moreover, inasmuch as the applicant claims that the ‘retail’-related services covered by the earlier marks, the services of ‘import and export agencies’ covered by the Turkish mark registered under number 62366, and the services of ‘placement of products to stores’ covered by the Turkish mark registered under number 204445 are at least related to the services covered by the contested mark, that line of argument must also be rejected on another ground.
50      It has been held that the purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of EUIPO within the meaning of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), so it is not the Court’s function to review the facts in the light of matters produced for the first time before it (see, to that effect, judgments of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited, and of 30 September 2015, Gat Microencapsulation v OHIM — BASF (KARIS), T‑720/13, not published, EU:T:2015:735, paragraph 89).
51      As EUIPO notes, without being challenged in that regard by the applicant before the Court, such claims emerge neither from the statement of case of 5 December 2014 lodged by the applicant before the Cancellation Division, nor from its statement setting out the grounds of appeal of 29 December 2015 lodged before the Board of Appeal against the decision of the Cancellation Division of 25 August 2015.
52      It is therefore a new argument, which the applicant did not submit before EUIPO, that the latter was not required to examine of its own motion and which is therefore inadmissible (judgment of 18 April 2013, Peek & Cloppenburg v OHIM — Peek & Cloppenburg (Peek & Cloppenburg), T‑506/11, not published, EU:T:2013:197, paragraph 33).
53      Lastly, the applicant submits that the similarity of the signs at issue, the intervener’s knowledge of its marks and the fact that it did not give permission or authorisation for the contested mark to be filed serve to establish that the intervener was acting in bad faith, within the meaning of Article 52(1)(b) of Regulation No 207/2009. The applicant adds that the intervener’s dishonest intention, namely the intention to appropriate its marks, is demonstrated, first, by the presence of the ‘koton’ element in the contested mark and, second, by the fact that he was a former distributor of the applicant’s goods, and therefore acted in disregard of his duty of fairness and of honest practices in industrial or commercial matters. Furthermore, the contested decision is contrary to EUIPO’s decision-making practice.
54      It must be stated that, as EUIPO observes, the Cancellation Division found, first, that the applicant did not adduce any evidence of the intervener’s dishonest intention on the date when he filed the EU trade mark, namely 25 April 2011, apart from the fact that there had been a business relationship between the parties, and, second, that mere knowledge of the applicant’s mark is not sufficient to establish that the intervener was acting in bad faith.
55      In that regard, it has been held that the fact the proprietor of an EU trade mark has knowledge of an identical or similar earlier sign does not, in any event, suffice to establish his bad faith where there are no other relevant factors (see, to that effect, judgment of 1 February 2012, Carrols v OHIM — Gambettola (Pollo Tropical CHICKEN ON THE GRILL), T‑291/09, EU:T:2012:39, paragraph 50).
56      Moreover, as regards the chronology of the events, the combination of factors such as the fact that the parties had a business relationship until 2004, as the Board of Appeal noted in paragraph 22 of the contested decision, and the fact that the EU trade mark application had been lodged on 25 April 2011, that is seven years later and during which period it has not been possible to establish that there was any contact between the parties, is not in itself indicative of the intervener’s dishonest intention or of the breach of a duty of fairness vis-a-vis the applicant or of honest practices in business relations.
57      Similarly, the fact that the intervener filed a notice of opposition on 24 September 2013 with the Spanish Patent and Trade Mark Office against the international registration No 1171878, relating to the applicant’s KOTON mark, on the basis of his earlier Spanish figurative mark KOTON, registered under number 2578587 for goods or services dissimilar to those, in Class 39, covered by the contested mark, cannot in itself constitute proof of his bad faith, but falls within the legitimate exercise of his rights.
58      It follows that the applicant has not, in any event, in any way shown that, on the date on which the application for the EU trade mark was filed, the intervener intended to prevent the applicant from using the earlier marks (see, to that effect, judgments of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraph 44, and of 21 March 2012, FS, T‑227/09, EU:T:2012:138, paragraph 34).
59      Moreover, the applicant’s argument by which it seeks to show that the contested decision is contrary to several decisions of the Boards of Appeal of EUIPO which accepted that the owner of the EU trade mark application — a former distributor or person who had a business relationship with the proprietor of an earlier mark — had acted in bad faith is not capable of calling into question the validity of the contested decision. It is sufficient to note in that regard that EUIPO is required to decide each case on its own merits and that it is not bound by previous decisions in other cases. The legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009 and not on the basis of any previous decision-making practice of those boards. Furthermore, in its review of legality, the Court is not bound by EUIPO’s decision-making practice (see judgment of 12 March 2014, Borrajo Canelo v OHIM — Tecnoazúcar (PALMA MULATA), T‑381/12, not published, EU:T:2014:119, paragraph 43 and the case-law cited).
60      In the light of those various matters, the Board of Appeal was fully entitled to conclude, in the context of the overall analysis undertaken pursuant to Article 52(1)(b) of Regulation No 207/2009, that the intervener’s bad faith had not been established, when the contested mark was registered for services dissimilar to those designated by the earlier Maltese figurative marks registered under numbers 46666 and 46667, and by the international registration No 777048, thus precluding any likelihood of confusion between the marks at issue.
61      Accordingly, the single plea in law alleging infringement of Article 52(1)(b) of Regulation No 207/2009 must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
62      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. 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 (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Koton Mağazacilik Tekstil Sanayi ve Ticaret AŞ to pay the costs.
Prek
Buttigieg
Berke
Delivered in open court in Luxembourg on 30 November 2017.
E. Coulon
S. Gervasoni
Registrar
President
*      Language of the case: English.