JUDGMENT OF THE GENERAL COURT (First Chamber)
9 July 2025 (*)
( EU trade mark – Invalidity proceedings – Figurative mark representing three Chinese characters – Absolute ground for invalidity – Bad faith – Article 52(1)(b) of Regulation (EC) No 207/2009 (now Article 59(1)(b) of Regulation (EU) 2017/1001) )
In Case T‑128/24,
Guangzhou Wanglaoji Grand Health Co. Ltd, established in Guangzhou (China), represented by P. Groß, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Nicolás Gómez and T. Klee, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Multi Access Ltd, established in Road Town (British Virgin Islands), represented by H. Gauß and S. Rak, lawyers,
THE GENERAL COURT (First Chamber),
composed of R. Mastroianni, President, M. Brkan (Rapporteur) and S.L. Kalėda, Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 29 January 2025,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Guangzhou Wanglaoji Grand Health Co. Ltd, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 December 2023 (Case R 329/2023-4) (‘the contested decision’).
Background to the dispute
2        On 25 November 2014, the intervener, Multi Access Ltd, filed an application for registration of an EU trade mark with 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)).
3        The contested trade mark in respect of which registration was applied for was the following figurative mark:
4        The goods in respect of which registration was sought are in Classes 5, 30 and 32 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. The goods and services consist, inter alia, of Chinese herbs and medicines, tea or herbal tea products, beverages, preparations for making beverages, beers, mineral and carbonated waters and other non-alcoholic beverages.
5        The contested trade mark was registered on 23 March 2015.
6        On 10 July 2018, the applicant filed an application for a declaration of invalidity of the contested trade mark in respect of all the goods covered by that mark. The ground relied on in support of that application was that referred to in Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001).
7        By decision of 15 December 2022, the Cancellation Division rejected the application for a declaration of invalidity on the ground that bad faith on the part of the intervener when filing the contested marks had not been established.
8        On 8 February 2023, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
9        By the contested decision, the Board of Appeal dismissed the appeal brought against the decision of the Cancellation Division.
10      In the contested decision, in the first place, the Board of Appeal found that the applicant challenged the contested decision in its entirety but that, in its statement of grounds, it had not raised arguments seeking to challenge the Cancellation Division’s findings and conclusion on the basis of which the Cancellation Division had dismissed the intervener’s claim of bad faith based on ‘the repetitive conduct claim’ when filing the contested trade mark. Consequently, the Board of Appeal took the view that it was only necessary to carry out a thorough analysis as regards the intervener’s claim of bad faith based on ‘the true owner claim’ of the trade mark consisting of the three Chinese characters 王老吉 (‘the three Chinese characters’). According to the Board of Appeal, the Cancellation Division was right to dismiss the application for a declaration of invalidity in its entirety, with the result that it endorsed the findings of the decision of the Cancellation Division.
11      In the second place, the Board of Appeal found that the applicant and the intervener claimed to be the legitimate proprietor of the rights to the trade mark consisting of the three Chinese characters, the Latin transliteration of which in Mandarin is ‘wang lao ji’ and the Latin transliteration of which in Cantonese is ‘wong lo kat’. According to the Board of Appeal, the applicant and the intervener do not dispute that, in 1913, the use of the trade mark consisting of the three Chinese characters was divided between, on the one hand, the branch of which the applicant is the successor, which had obtained the rights to the trade mark in mainland China, and, on the other hand, the branch of which the intervener is the successor, which had been granted the rights to the trade mark in Hong Kong (China).
12      The Board of Appeal noted that a chronology of established facts showed that the applicant and the intervener had a long-standing and complex relationship and that the intervener knew that the contested trade mark was being marketed and used in China by the applicant prior to the date of filing of the application for registration of that trade mark.
13      The Board of Appeal considered that, at the latest in 2002, the applicant’s group of companies should have known that the intervener’s companies were using trade marks consisting of the three Chinese characters in Europe.
14      In addition, the Board of Appeal found that there was nothing to indicate that the separation of the markets between the applicant and the intervener in 1913 had prevented the intervener from legitimately filing and using the contested trade mark in the European Union.
15      The Board of Appeal considered that, since the intervener and its companies had informed the applicant’s companies through licence agreements signed in 1995 and 2002 that they were using trade marks consisting of the three Chinese characters abroad and, in particular, in Europe, that transparency could not be reconciled with the assertion that the intervener had acted dishonestly, with the aim of taking undue advantage of the applicant’s reputation.
16      In the contested decision, the Board of Appeal found that the intervener’s intention at the time of registration of the contested trade mark was part of a normal commercial strategy, in particular in view of the fact that it was the legitimate proprietor of the marks containing the three Chinese characters in Hong Kong and that it had not been proved that it was prevented from extending its rights to other jurisdictions.
17      Consequently, the Board of Appeal concluded that the arguments and evidence submitted by the applicant did not demonstrate that the intervener’s subjective intentions as regards the contested trade mark application proved that it acted in bad faith at the time of filing that application.
Forms of order sought
18      The applicant claims that the Court should:
–        annul the contested decision;
–        declare the contested trade mark invalid;
–        order EUIPO and the intervener to pay the costs, including those incurred before the Board of Appeal.
19      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that an oral hearing is convened.
20      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
The applicable law ratione temporis
21      It should be noted that the application for registration of the contested trade mark was filed on 25 November 2014.
22      Since the date of filing of the application for registration of the contested trade mark is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).
23      Consequently, in the present case, as regards the substantive rules, the reference made to Article 18(1) of Regulation 2017/1001 must be understood as referring to the identical provision laid down in Article 15(1) of Regulation No 207/2009, as amended. Similarly, the reference made by the intervener in its written pleadings to Article 8(2) of Regulation 2017/1001 must be understood as referring to Article 8(2), which is identical in content, of Regulation No 207/2009, as amended.
24      By contrast, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed, in the present case, by the procedural provisions of Regulation 2017/1001, in particular those of Article 72(2) and (5) of that regulation, as well as those of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1).
Admissibility of certain evidence submitted by the applicant
25      In support of its claims relating to the infringement of Article 52(1)(b) of Regulation No 207/2009, the applicant annexed to its application documents intended to demonstrate bad faith on the part of the intervener. As regards that evidence, the applicant points out that, in spite of Article 188 of the Rules of Procedure of the General Court, the Court has already held that, in certain circumstances, such evidence may be declared admissible. In its request for a hearing, the applicant produced new evidence to show that Ms Wong Kin Yee was the legal representative and President of Guangzhou Wanglaoji Pharmaceutical and that that person had attempted to harm the assets held by other beneficiaries.
26      EUIPO and the intervener consider that, with the exception of the annex entitled ‘New Evidence No 2’, the new evidence produced by the applicant is inadmissible.
27      In the first place, it must be borne in mind that the purpose of actions before the Court under Article 72(2) of Regulation 2017/1001 is to obtain a review of the legality of decisions of the Boards of Appeal. In the context of Regulation 2017/1001, Article 95 thereof requires that review to be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter the decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).
28      It is therefore not the Court’s function to re-examine the factual circumstances in the light of evidence submitted for the first time before it. To allow such evidence would be contrary to Article 188 of the Rules of Procedure, according to which the parties’ submissions may not alter the subject matter of the proceedings before the Board of Appeal. Accordingly, the evidence produced for the first time before the Court must be declared inadmissible, without there being any need to examine it (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
29      By contrast, it is clear from the case-law that neither the parties nor the Court itself can be precluded from drawing on national legislation, case-law or academic writing, where it is not alleged that the Board of Appeal failed to take the factual aspects of a specific national judgment into account, but rather reliance is placed on judgments or academic writing in support of a plea alleging that the Board of Appeal misapplied a provision of Regulation No 207/2009 (judgment of 18 March 2016, Karl-May-Verlag v OHIM – Constantin Film Produktion (WINNETOU), T‑501/13, EU:T:2016:161, paragraph 18; see also, to that effect, judgment of 12 July 2006, Vitakraft-Werke Wührmann v OHIM – Johnson’s Veterinary Products (VITACOAT), T‑277/04, EU:T:2006:202, paragraph 71).
30      In the present case, as regards the evidence annexed to the application, it must be stated that, as the intervener points out, the annex entitled ‘New Evidence 2’, namely a transfer agreement between the company Wong Lo Kat and the intervener, had been submitted by the latter in its written pleading submitted to the Cancellation Division. It follows that that document, which had been produced in the proceedings before EUIPO, cannot be rejected as inadmissible.
31      By contrast, as EUIPO and the intervener point out, it must be held that the other evidence annexed to the application, namely the annexes entitled ‘New Evidence 1, and 3 to 6’, was not, as the applicant moreover acknowledges, produced in the context of the invalidity proceedings before EUIPO.
32      Admittedly, an applicant is entitled to submit documents before the General Court in order to support the accuracy of a well-known fact which has not been established in the decision of the EUIPO body challenged before the General Court (judgments of 20 June 2012, Kraft Foods Schweiz v OHIM – Compañía Nacional de Chocolates (CORONA), T‑357/10, not published, EU:T:2012:312, paragraph 16, and of 29 January 2019, The GB Foods v EUIPO – Yatecomeré (YATEKOMO), T‑336/17, not published, EU:T:2019:36, paragraph 30).
33      However, in the present case, the new evidence produced consists of a shareholder agreement of Guangzhou WangLaoJi Pharmaceutical dated 26 December 2014 (New Evidence 1), information dated 28 February 2024 on Guangzhou WangLaoJi Pharmaceutical (New Evidence 3), an undated newspaper article stating that Ms Wong Kin Yee was charged with loan fraud (New Evidence 5) and a report dated 25 June 2012 from the People’s Public Prosecutor’s Office in Guangzhou (China) relating to suspicions of corruption against Mr Chan Hung To (New Evidence 6). It must be noted, as EUIPO rightly maintains, that that new evidence does not relate to well-known facts.
34      So far as concerns the judgment handed down by a Hong Kong court, the date of which is not specified (New Evidence 4), at the hearing, EUIPO took the view that that evidence had been produced in order to establish factual elements. The applicant confirmed that that judgment had been produced to prove factual elements relating to the allegedly fraudulent conduct of Ms Wong Kin Yee. Since that judgment was not produced for the purpose of interpreting the relevant provisions of Regulation No 207/2009, but for the sole purpose of criticising the Board of Appeal for failing to take account of a factual element, new evidence No 4 must be rejected as inadmissible.
35      It follows that New Evidence 1, 3, 4, 5 and 6, annexed to the application, must be declared inadmissible.
36      In the second place, as regards the evidence produced after the first exchange of pleadings, namely that annexed to the applicant’s request for a hearing, it must be borne in mind that, pursuant to Article 85(3) of the Rules of Procedure, it is only exceptionally that the main parties may produce or offer further evidence before the oral part of the procedure is closed or before the Court’s decision to rule without an oral part of the procedure, provided that the delay in the submission of such evidence is justified. Furthermore, in intellectual property matters, in the event that the delay in submitting new offers of evidence is justified, in order for that evidence to be declared admissible, that evidence must also satisfy the conditions laid down in Article 188 of the Rules of Procedure, as interpreted in paragraph 28 above.
37      In that regard, it should be noted that Guangzhou WangLaoJi Pharmaceutical’s internal documents for the years 2010, 2011 and 2018 (New Evidence 7A to 7K), the information for the year 2023 relating to the company Wong Lo Kat (New Evidence 7N and 7O) and the trade mark decisions given in Hong Kong in 2021 (New Evidence 7L and 7M) predate the bringing of the present action. The applicant has not provided any convincing explanation as to why that evidence had not been filed previously. Thus, since the applicant has not justified the delay in submitting the new evidence annexed to the request for a hearing, it must be rejected as inadmissible, without it being necessary to ascertain whether that evidence complies with Article 188 of the Rules of Procedure.
Merits of the action
38      In support of its action, the applicant relies, in essence, on two pleas in law. The first plea alleges infringement of Article 22(1)(b) and (c) and of Article 27(2) of Delegated Regulation 2018/625, read in conjunction with Article 71(1) of Regulation 2017/1001. The second plea alleges infringement of Article 52(1)(b) of Regulation No 207/2009.
The plea alleging infringement of Article 22(1)(b) and (c) and of Article 27(2) of Delegated Regulation 2018/625, read in conjunction with Article 71(1) of Regulation 2017/1001
39      The applicant submits that the Board of Appeal erred in law in stating that the action before it was limited to the claim relating to ‘the true owner of the mark’ consisting of the three Chinese characters. According to the applicant, although the Board of Appeal pointed out that, before the Cancellation Division, it had referred to the bad faith on the part of the intervener on the basis of a claim of ‘repetitive conduct’ and another claim relating to the ‘true owner of the mark’, the Board of Appeal erred in finding that the grounds of appeal before it did not relate to the claim of ‘repetitive conduct’. Consequently, by limiting the scope of the action to the claim relating to the ‘true owner of the mark’, the applicant considers that the Board of Appeal failed to analyse the claim of ‘repetitive conduct’. Thus, the applicant submits that the Board of Appeal erred in law in its interpretation of Article 22(1)(b) and (c) and of Article 27(2) of Delegated Regulation 2018/625, read in conjunction with Article 71(1) of Regulation 2017/1001. According to the applicant, the Board of Appeal failed to examine whether the filing of the application for registration of the contested trade mark six days before the expiry of the grace period of earlier EU trade mark No 8293714 followed a commercial logic.
40      EUIPO and the intervener dispute that line of argument.
41      In that regard, in the first place, it should be borne in mind that, taking into account the functional continuity between, on the one hand, the various bodies of EUIPO and, on the other hand, the Boards of Appeal, as reflected in Article 71(1) of Regulation 2017/1001 (see, to that effect, judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 30, and of 30 June 2021, Zoom v EUIPO – Facetec (ZOOM), T‑204/20, not published, EU:T:2021:391, paragraph 34), the decision of the Cancellation Division and the grounds on which it is based form 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 exercise its review of legality in full as regards the validity of the assessment of the intervener’s lack of bad faith (see, to that effect, judgment of 28 September 2016, Kozmetika Afrodita v EUIPO – Núñez Martín and Machado Montesinos (KOZMeTIKA AFRODITA), T‑574/15, not published, EU:T:2016:574, paragraph 66).
42      In the present case, it is true that the contested decision does not expressly set out the Board of Appeal’s reasoning as regards the line of argument alleging bad faith on the part of the intervener based on the claim of ‘repetitive conduct’. However, first, it should be noted that the Cancellation Division’s assessments concerning the claim of ‘repetitive conduct’ are summarised in paragraph 11 of the contested decision, which implies that those assessments were taken into consideration by the Board of Appeal (see, to that effect, judgment of 18 October 2016, Raimund Schmitt Verpachtungsgesellschaft v EUIPO (Brauwelt), T‑56/15, EU:T:2016:618, paragraph 131). Secondly, in paragraph 86 of the contested decision, the Board of Appeal concluded that the Cancellation Division had correctly rejected the application for a declaration of invalidity in its entirety and fully endorsed the Cancellation Division’s findings and found that they formed an integral part of the contested decision. Therefore, it must be held that, in essence, the Board of Appeal endorsed the Cancellation Division’s conclusion and findings relating to the claim of ‘repetitive conduct’ without setting out in detail the reasons why that claim had to be rejected.
43      In the second place, it is apparent from Article 22(1)(b) and (c) of Delegated Regulation 2018/625 that a statement setting out the grounds of appeal filed pursuant to the fourth sentence of Article 68(1) of Regulation 2017/1001 must contain a clear and precise identification of the grounds of appeal on which the application for annulment of the contested decision is based, within the limits defined in Article 21(1)(e) of Delegated Regulation 2018/625, and the facts, evidence and arguments in support of the grounds relied on in accordance with the provisions of Article 55(2) of that regulation.
44      In the present case, it should be noted that the statement setting out the grounds of appeal by which the applicant brought the action before the Board of Appeal did not contain any grounds, facts, evidence or arguments intended to challenge the Cancellation Division’s conclusion and findings by which it rejected the application for a declaration of invalidity of the contested trade mark based on the claim of ‘repetitive conduct’.
45      Contrary to what the applicant claims, the indication, in its statement setting out the grounds of its appeal before the Board of Appeal, that ‘the last invalidity proceeding was suspended until the case R2108/2018-2 concerning the appeal against the decision of 31/08/2018 taken in the parallel case C 13317 is resolve[d]’ cannot be regarded as a ground or argument seeking to challenge the Cancellation Division’s findings relating to the claim of ‘repetitive conduct’.
46      It is true that the decision of 31 August 2018 which was the subject of an appeal in a parallel case had been examined in the Cancellation Division’s findings relating to the claim of ‘repetitive conduct’. However, it must be noted that, in its statement setting out the grounds of its appeal, the applicant did not expressly challenge the examination of that other decision carried out by the Cancellation Division, but merely stated that the invalidity proceedings concerning the contested trade mark were suspended until the appeal concerning Case C 13 317 had been decided. It must be stated that that indication alone does not satisfy the conditions laid down in Article 22(1)(b) and (c) of Delegated Regulation 2018/625.
47      It follows that the Board of Appeal did not make an error of assessment in finding, in paragraph 31 of the contested decision, that the grounds of appeal before it were limited to the applicant’s arguments concerning the rejection of the application for a declaration of invalidity of the contested mark based on the claim relating to the ‘true owner of the mark’.
48      Furthermore, assuming that the applicant intends to argue that the Board of Appeal should have examined the arguments that it had filed with the Cancellation Division, it must be noted that it follows from the provisions of Article 22(1)(b) and (c) of Delegated Regulation 2018/625 that it is the statement setting out the grounds of appeal that must make it possible to understand why the Board of Appeal is requested to annul or alter the contested decision (see, to that effect, judgment of 16 May 2011, Atlas Transport v OHIM – Atlas Air (ATLAS), T‑145/08, EU:T:2011:213, paragraphs 41 and 46) and that, consequently, the Board of Appeal is not required to respond to arguments which are not raised in that statement (judgments of 8 March 2023, Sympatex Technologies v EUIPO – Liwe Española (Sympathy Inside), T‑372/21, not published, EU:T:2023:111, paragraph 49, and of 5 June 2024, Hofstede Insights v EUIPO – Geert Hofstede (HOFSTEDE INSIGHTS), T‑429/23, not published, EU:T:2024:349, paragraph 19).
49      In addition, in accordance with Article 27(2) of Delegated Regulation 2018/625, in inter partes proceedings, the examination of the appeal is to be restricted to the grounds invoked in the statement of grounds. Matters of law not raised by the parties are to be examined by the Board of Appeal only where they concern essential procedural requirements or where it is necessary to resolve them in order to ensure a correct application of the substantive rules, namely those of Regulation No 207/2009, having regard to the facts, evidence and arguments presented by the parties. The applicant has not identified any question of law relating to essential procedural requirements or which was necessary to ensure the correct application of Regulation No 207/2009 which the Board of Appeal failed to examine of its own motion.
50      In the light of the foregoing considerations, the plea alleging infringement of Article 22(1)(b) and (c) and of Article 27(2) of Delegated Regulation 2018/625, read in conjunction with Article 71(1) of Regulation 2017/1001, must be dismissed.
The plea alleging infringement of Article 52(1)(b) of Regulation No 207/2009
51      In support of this plea, the applicant relies, in essence, on two parts. The first part alleges an error in the examination of the claim of ‘repetitive conduct’. The second part alleges an error in the examination of the claim relating to the ‘true owner of the mark’.
52      The Court considers it appropriate to rule, first, on the second part.
–       The part alleging errors of law and of assessment in the examination of the claim relating to the ‘true owner of the mark’
53      The applicant submits that the Board of Appeal erred in law by interpreting Article 52(1)(b) of Regulation No 207/2009 too restrictively, with the result that it wrongly considered that the intervener’s intention to register the contested trade mark formed part of a normal commercial strategy, which led it not to take other factors into account. In particular, the applicant considers that the Board of Appeal erred in law in concluding that the findings set out in the contested decision were sufficient to reject the application for a declaration of invalidity.
54      In addition, the applicant submits that the Board of Appeal misinterpreted Article 52(2)(b) of Regulation No 207/2009 in law by concluding, first, that the lack of evidence showing that the intervener had been prevented from extending its rights to other countries or territories was sufficient to reject the application for a declaration of invalidity; secondly, that the fact that it had not been proved that the intervener’s intention in challenging those marks of the applicant did not pursue any other objective than a legitimate attempt to defend its own rights was sufficient to reject the application for a declaration of invalidity; thirdly, that the finding that the conflicts between the parties did not demonstrate bad faith on the part of the intervener when filing the application for registration of the contested mark on the ground that they concerned other rights in other countries or territories was sufficient to reject the application for a declaration of invalidity; fourthly, that the existence of a legitimate interest of the intervener in extending its activities to the European Union was sufficient to disregard the evidence submitted and to reject the application for a declaration of invalidity; fifthly, that the fact that the Intellectual Property Office of the Philippines referred to different circumstances was sufficient to rule out that evidence; sixthly, that the existence of plausible explanations concerning the objectives and commercial logic pursued by the application for registration of the contested mark was sufficient to reject the application for a declaration of invalidity; and, seventhly, that the finding that a conflict arose from a disagreement concerning the contractual conditions was sufficient to reject the application for a declaration of invalidity.
55      The applicant submits that the Board of Appeal erred in its assessment of the intervener’s bad faith. It considers that the Board of Appeal concluded that the intervener had a legitimate interest in expanding its activities in the European Union without sufficiently examining the existence of dishonest intent and other harmful reasons set out in the evidence. According to the applicant, the Board of Appeal attached too little importance to the facts demonstrating dishonest and unethical intent on the part of the intervener to prevent it from using the three Chinese characters forming the subject matter of the contested mark despite the fact that the applicant enjoyed greater renown and had been present on the market for a longer period, with the result that it enjoyed greater protection. The applicant submits that the fact that the intervener was already the proprietor of earlier trade marks in Member States of the European Union well before the filing of the application for registration of the contested trade mark cannot substantiate the existence of a legitimate interest in filing the contested mark many years later in view, in particular, of its efforts which gave rise to the reputation of the signs consisting of the three Chinese characters which are the subject of the contested trade mark. Moreover, the applicant submits that the Board of Appeal committed an error of assessment in finding that the intervener’s predecessor owned a trade mark which was earlier than that of its predecessor. In addition, the applicant considers that disputes between it and the intervener concerning other rights in other countries or territories cannot as such be incapable of serving as indicia showing that the intervener filed the application for registration of the contested trade mark with a dishonest intention. Furthermore, the applicant submits that the Board of Appeal erred in finding that, in order to assess whether there was bad faith, it was sufficient to examine whether it was possible to establish the existence of a commercial logic or normal commercial conduct, since, in so doing, it did not take account of all the relevant circumstances. Moreover, the applicant submits that, in the present case, the intervener’s intention at the time of filing the application for registration of the contested trade mark was not to make use of it in a way that fell within the functions of a trade mark.
56      The applicant also complains that the Board of Appeal failed to take account of the fact that the intervener had infringed certain contractual provisions. According to the applicant, the intervener infringed the shareholder contract of Guangzhou WangLaoJi Pharmaceutical (new evidence No 1). Thus, the applicant considers that the intervener improperly registered approximately one thousand trade marks during the period of validity of that contract. In addition, the applicant submits that the Board of Appeal failed to take account of the infringement of the right of pre-emption enjoyed by Guangzhou Yangcheng Pharmaceutical in respect of the shares and trade marks held by Wong Lo Kat under the agreement concluded between those companies on 23 November 2002.
57      The applicant also considers that the Board of Appeal erred in finding that the intervener was the legitimate proprietor of the trade mark consisting of the three Chinese characters. First, it submits that the Board of Appeal erred in finding that the intervener was the real successor in title to Mr Wang Heng Yu, who had been granted the rights to the trade mark consisting of the three Chinese characters in Hong Kong. According to the applicant, the Board of Appeal failed to take account of the ‘Letter of Administration’ of 28 August 1988, in which it was stated that Mr Wong Yue Hong’s nine children were the beneficiaries of the succession of the two trade marks registered in Hong Kong. The applicant considers that one of the beneficiaries of the succession, Ms Wong Kin Yee, adopted dishonest measures to unlawfully deprive the other eight beneficiaries of their rights to those marks, with the result that they can no longer use the trade marks consisting of the three Chinese characters, which is contrary to the ‘Letter of Administration’. Consequently, the applicant takes the view that the intervener, which was transferred all the marks consisting of the three Chinese characters, filed the marks in bad faith since it had no reasonable grounds for applying for their registration and use. Secondly, the applicant submits that the Board of Appeal erred in finding that all the similar or identical marks filed in the European Union or its Member States before the date of filing of the contested mark were the property of the intervener. According to the applicant, the assignment of the mark by Wong Lo Kat International to the intervener must be regarded as invalid since it occurred in breach of Guangzhou Yangcheng Pharmaceutical’s right of pre-emption under the agreement concluded on 23 November 2002.
58      Lastly, the applicant complains that the Board of Appeal did not find that Ms Wong Kin Yee had made a fraudulent affidavit in the proceedings before the Cancellation Division.
59      EUIPO and the intervener dispute that line of argument.
60      In that regard, under Article 52(1)(b) of Regulation No 207/2009, 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 it filed the application for registration of that trade mark.
61      In that regard, it should be noted that 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 29 June 2017, Cipriani v EUIPO – Hotel Cipriani (CIPRIANI), T‑343/14, EU:T:2017:458, paragraph 25 and the case-law cited).
62      Nevertheless, the Court of Justice and the General Court have provided a number of clarifications as to how the concept of bad faith as referred to in Article 52(1)(b) of Regulation No 207/2009 should be interpreted and the existence of that concept assessed.
63      In the first place, 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 (judgments of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 45, and of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 74).
64      The concept of bad faith must moreover be understood in the context of trade mark law, which is that of the course of trade. In that regard, 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 by 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 (judgments of 12 September 2019, Koton Magazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 45, and of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 74).
65      Consequently, the absolute ground for invalidity referred to in Article 52(1)(b) of Regulation No 207/2009 applies where it is apparent from relevant and consistent indicia that the proprietor of an EU trade mark has filed the application for registration of that mark not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention 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, in particular the essential function of indicating origin (judgments of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 46, and of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 75).
66      In the second place, the intention of an applicant for a trade mark is a subjective factor which must, however, be determined objectively by the competent administrative or 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 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 47 and the case-law cited).
67      To that end, it is appropriate, in particular, to take into consideration, first, the fact that the applicant knows or ought to 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, secondly, the applicant’s intention to prevent that third party from continuing to use such a sign and, thirdly, the degree of legal protection enjoyed by the third party’s sign and the sign for which registration is sought (judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraph 53).
68      That said, the factors set out in paragraph 67 above 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 when filing the trade mark application (see, to that effect, judgment of 29 June 2017, CIPRIANI, T‑343/14, EU:T:2017:458, paragraph 28 and the case-law cited).
69      Thus, there may be situations in which the application for registration of a trade mark is liable to be regarded as having been filed in bad faith notwithstanding the absence of a likelihood of confusion between the sign used by a third party and the contested trade mark or if there had been no use, by a third party, of a sign identical with, or similar to, the contested trade mark. Other factual circumstances may, depending on the circumstances, constitute relevant and consistent indicia establishing the bad faith of the applicant (see, to that effect, judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraphs 52 to 56).
70      It must therefore be held that, in the context of the overall assessment 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 of its use since its creation, 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 up to that filing (see judgment of 7 July 2016, Copernicus-Trademarks v EUIPO – Maquet (LUCEO), T‑82/14, EU:T:2016:396, paragraph 32 and the case-law cited).
71      Similarly, it is possible to take into account the extent of the reputation enjoyed by the sign at issue at the time its registration was sought (judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraph 51), including where that sign has previously been registered or used by a third party as a trade mark (see, to that effect, judgment of 8 May 2014, Simca Europe v OHIM – PSA Peugeot Citroën (Simca), T‑327/12, EU:T:2014:240, paragraph 40).
72      The fact that the use of a sign for which registration is sought would enable the applicant to take unfair advantage of the reputation of an earlier trade mark or sign or of the name of a famous person is such as to establish bad faith on the part of the applicant (judgment of 6 July 2022, Zdút v EUIPO – Nehera and Others (nehera), T‑250/21, EU:T:2022:430, paragraph 32).
73      In the third place, where the bad faith of the trade mark applicant is based on its intention to take unfair advantage of the reputation of an earlier sign or name, the relevant public for the purpose of assessing the existence of that reputation and of the unfair advantage taken of that reputation is that targeted by the contested trade mark (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 36).
74      In the fourth place and finally, it should be borne in mind that it is for the applicant for a declaration of invalidity to prove the circumstances that substantiate a finding that an EU trade mark proprietor was acting in bad faith when it filed the application for registration of that mark (see judgment of 8 May 2014, Simca, T‑327/12, EU:T:2014:240, paragraph 35 and the case-law cited), good faith being presumed until proven otherwise (judgment of 13 December 2012, pelicantravel.com v OHIM – Pelikan (Pelikan), T‑136/11, not published, EU:T:2012:689, paragraph 57).
75      It is in the light of those preliminary considerations that the legality of the contested decision must be reviewed in so far as the Board of Appeal found that there was no bad faith on the part of the intervener when it filed the application for registration of the contested mark.
76      In the first place, as regards the alleged errors of law committed by the Board of Appeal in interpreting the concept of bad faith within the meaning of Article 52(1)(b) of Regulation No 207/2009, it should be noted that, in its arguments, the applicant essentially criticises the Board of Appeal for having taken insufficient account of certain factual circumstances. In particular, the applicant complains that the Board of Appeal did not sufficiently examine the dishonest intentions of the intervener.
77      At the hearing, requested by the Court to clarify its line of argument relating to the alleged errors of law, the applicant confirmed that that line of argument sought to call into question the factual findings in the contested decision on which the Board of Appeal had relied in order to reach the conclusion that the intervener had not acted in bad faith.
78      In addition, it must be noted that the applicant does not put forward any argument to show that the Board of Appeal’s interpretation of the provisions of Article 52(1)(b) of Regulation No 207/2009 in paragraphs 39 to 51 of the contested decision is legally incorrect, nor does it claim that the Board of Appeal failed to take into account a legal factor the examination of which is mandatory.
79      Thus, given that the applicant’s arguments do not call into question the interpretation of Article 52(1)(b) of Regulation No 207/2009 or a legally incorrect application of that provision, but do call into question the assessment made of the various factors taken into account in order to reach the conclusion that the intervener did not act in bad faith, in particular the factors and evidence referred to in the grounds of the contested decision, it must be held that the applicant raises, in essence, an error of assessment by the Board of Appeal and not an error of law.
80      Consequently, in the second place, it is necessary to examine whether the arguments raised by the applicant are such as to establish that the contested decision is vitiated by an error of assessment in that it was concluded that the applicant had not demonstrated that the intervener’s subjective intentions proved that it acted in bad faith at the time when the application for registration of the contested mark was filed.
81      In the present case, the applicant does not dispute the Board of Appeal’s findings as regards the origin of the contested trade mark. According to the Board of Appeal, the sign consisting of the three Chinese characters, first used in the nineteenth century in China by the creator of a herbal tea, was the subject of a distribution agreement in 1913, under the terms of which the applicant’s predecessors had obtained the rights over that trade mark in mainland China and the intervener’s predecessors had obtained the right to use that trade mark in Hong Kong. In the contested decision, on the basis of a chronology of events, the Board of Appeal found that the applicant and the intervener had a long-standing and complex relationship and that the intervener knew that the contested trade mark was being marketed and used in China by the applicant before the application for registration of that trade mark was filed.
82      It should be noted that, in the contested decision, the Board of Appeal was right to point out that the fact that the intervener knew that the applicant had long been using an identical or similar mark for identical or similar goods which could be confused with the mark for which registration was sought was not sufficient, in itself, to establish the existence of bad faith on the part of the intervener (see, to that effect, judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraph 40; see also, to that effect and by analogy, judgment of 27 June 2013, Malaysia Dairy Industries, C‑320/12, EU:C:2013:435, paragraph 37).
83      Furthermore, in order to reach the conclusion that the application for registration of the contested trade mark in the European Union was not filed by the intervener in bad faith, the Board of Appeal carried out an examination of all the relevant factors and evidence, namely the fact that the intervener held marks identical or comparable to the contested trade mark which had been registered in two Member States of the European Union before the filing of the application for registration of that mark, the relations between the applicant and the intervener, the intervener’s intention and the evidence relied on by the applicant to demonstrate the intervener’s alleged bad faith.
84      As regards the legal protection of the contested trade mark, the Board of Appeal found that all similar or identical marks registered in the European Union or its Member States before the filing of the application for registration of the contested trade mark were the property of the intervener, including French trade mark No 92430466 registered in 1992. In addition, the Board of Appeal noted that the Boards of Appeal of EUIPO had considered that EU trade marks No 13260302 and No 13260351, owned by the applicant, were visually different from the earlier EU trade marks owned by the intervener, consisting of the three Chinese characters, with the result that there was no likelihood of confusion, which the applicant does not dispute.
85      According to the applicant, the Board of Appeal made an error of assessment in finding that the intervener’s predecessor held a mark earlier than that of its predecessor. The applicant submits in that regard that the Board of Appeal did not take account of the fact that its predecessor had registered, from 1928 onwards, in China a trade mark consisting of the three Chinese characters, whereas the trade mark of the intervener’s predecessor had been registered later in Hong Kong in 1940.
86      In that regard, it should be noted that the Board of Appeal did not rely on the finding that the intervener’s predecessor held a mark earlier than that of the applicant’s predecessor in finding that the applicant had not demonstrated bad faith on the part of the intervener.
87      Given that, in accordance with the 1913 sharing agreement, the applicant and the intervener had rights over the same trade mark consisting of the three Chinese characters, the Board of Appeal was entitled to find, without making an error of assessment, that the applicant and the intervener were historically both legitimate proprietors of trade marks consisting of those three Chinese characters. Thus, in circumstances characterised by two producers both having rights over the same trade mark in third countries, in the context of the examination of the registration of that trade mark in the European Union, the Board of Appeal could validly consider that it was appropriate to apply the ‘first to file’ principle enshrined in Article 8(2) of Regulation No 207/2009.
88      In accordance with that principle, a sign may be registered as an EU trade mark only if that registration is not precluded by an earlier mark, whether 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. 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 an unregistered trade mark within the meaning specified in the preceding sentence does not prevent an identical or similar trade mark from being registered as an EU trade mark for identical or similar goods or services (see, by analogy, judgment of 11 July 2013, SA.PAR. v OHIM – Salini Costruttori (GRUPPO SALINI), T‑321/10, EU:T:2013:372, paragraph 17 and the case-law cited).
89      Consequently, the fact that the applicant’s predecessor had registered, as early as 1928, in China a trade mark consisting of the three Chinese characters, whereas that of the intervener’s predecessor had been registered later in Hong Kong in 1940, even if it were established, is not decisive in the circumstances of the present case.
90      It should be noted that the applicant does not claim to have registered marks identical or similar to the contested trade mark in the European Union, in a Member State or with the Benelux Office for Intellectual Property, nor does it rely on the registration of a mark identical or similar to the contested mark registered under international arrangements which have effect in a Member State or of a mark registered under international arrangements which have effect in the European Union, before the registration, in 1992, in France and the United Kingdom of marks consisting of the three Chinese characters owned by the intervener’s predecessors. Similarly, the applicant also does not claim to have registered marks identical or similar to the contested trade mark in the European Union, in a Member State or at the Benelux Office for Intellectual Property, or of a mark registered under international arrangements which have effect in a Member State or of a trade mark registered under international arrangements which have effect in the European Union, before the filing of the application for registration of the contested trade mark.
91      However, the application of the ‘first to file’ principle is qualified, in particular by Article 52(1)(b) of Regulation No 207/2009, under which an EU trade mark must be declared invalid on application to EUIPO, where the applicant was acting in bad faith when it filed the application for registration of the trade mark.
92      It follows that, unless the applicant has demonstrated bad faith on the part of the intervener at the time of filing the application for registration of the contested trade mark, the Board of Appeal could take account of the fact that the intervener was the ‘first to file’ that mark, particularly since it already held marks identical or similar to the contested trade mark in two Member States of the European Union before the filing of the application for registration of that mark.
93      Furthermore, in the contested decision, the Board of Appeal found that the relationship between the applicant and the intervener and the evidence relied on by the applicant were not such as to establish bad faith on the part of the intervener when it filed the application for registration of the contested trade mark.
94      As regards specifically the relationship between the applicant and the intervener, the Board of Appeal examined it in order to determine whether there were elements, such as contractual provisions, capable of preventing the intervener from applying for registration of the contested trade mark in the European Union.
95      In that regard, in the contested decision, the Board of Appeal, first of all, noted that, in the light of certain licence agreements concluded between companies linked to the intervener and the applicant, the applicant’s group of companies should have known that the intervener was using marks consisting of the three Chinese characters outside the jurisdiction of Hong Kong.
96      In particular, it should be noted that it is apparent from the licence agreement signed on 20 February 1995 between a company linked to the applicant and companies linked to the intervener’s predecessor that the company Wong Lo Kat International held registration rights in Hong Kong and in ‘overseas’ countries. Furthermore, in the agreement concluded on 23 November 2002 between a company linked to the applicant and the intervener’s predecessor, it was stated that the latter owned, inter alia, a trade mark consisting of the three Chinese characters in Macao (China), Malaysia, Singapore, Taiwan, Vietnam, Japan, Australia, Canada, France and the United Kingdom. According to the terms of that agreement, the company linked to the applicant was authorised to use, from the date of signature of that agreement of 23 November 2002, the trade marks held in those territories by the intervener’s predecessor, including in France and the United Kingdom, and to sell herbal solutions there.
97      Thus, the Board of Appeal could, without making an error of assessment, find that the applicant’s group of companies would have known, by 2002 at the latest, that companies linked to the intervener were using trade marks consisting of the three Chinese characters, in particular in two Member States of the European Union, namely France and the United Kingdom when that State was still a member of the European Union. It must be stated that, in the present action, the applicant has not put forward any argument seeking to call that finding into question.
98      Next, the applicant does not dispute the Board of Appeal’s finding that no observations had been made on the agreements referred to in paragraph 96 above, their validity had not been called into question and the applicant had not relied on a legal act which made it possible to establish the existence of rights and obligations between it and the intervener as regards the territory of the European Union.
99      In addition, the Board of Appeal found that nothing in EUIPO’s administrative file indicated that the separation of markets between the applicant and the intervener in 1913 was capable of preventing the intervener, its affiliates or its predecessors from filing and using the contested trade mark in the European Union.
100    It should be noted that the applicant has not submitted any evidence to show that the intervener’s predecessors were not entitled to apply for registration of trade marks outside Hong Kong, in particular the marks registered in France and the United Kingdom in 1992. Nor has it produced any admissible evidence capable of demonstrating that the intervener was not entitled to apply for registration of the contested trade mark in the European Union. In order to challenge the intervener’s ability to file the contested trade mark, the applicant relies on a shareholder contract of Guangzhou WangLaoJi Pharmaceutical signed on 26 December 2014 between a company which was linked to it and a company allegedly linked to the intervener’s predecessor (new evidence No 1). However, that document was declared inadmissible on the grounds that it had not been produced during the proceedings before EUIPO (see paragraphs 33 and 35 above). Consequently, the line of argument that the intervener was not entitled to apply for registration of the contested trade mark in the European Union must be rejected as not being substantiated by any evidence.
101    Accordingly, the applicant has not shown that the Board of Appeal had erred in its assessment in finding that the intervener or its predecessors were not prevented from extending to the European Union their rights in trade marks consisting of the three Chinese characters.
102    Lastly, the Board of Appeal found that, given that the intervener had enjoyed legal protection for its marks in the territory of the European Union and in other jurisdictions for decades, the applicant’s commercial success in China could not, in itself, be sufficient to establish that the intervener had taken unfair advantage, by filing the application for the contested trade mark, of the reputation acquired by the applicant.
103    The applicant submits that the intervener’s objective was to prevent it from using the sign consisting of the three Chinese characters as a trade mark in the European Union despite the fact that it was better known and had been present on the market for a longer period. In addition, it submits that the fact that the intervener is already the proprietor of earlier marks in EU Member States did not necessarily imply a legitimate interest in filing the application for registration of the contested trade mark, given that it was its efforts which gave rise to the reputation of the signs consisting of the three Chinese characters which formed the subject matter of the contested trade mark.
104    It should be noted that, in support of that line of argument, the applicant did not specify the market on which it had been present for a longer period than the intervener and the intervener’s predecessors, nor did it show that it was better known. In its application, the applicant merely claims in the abstract that it was better known than the intervener without relying on evidence to support such an assertion. Consequently, its argument based, in essence, on the intervener’s alleged intention to take unfair advantage of the reputation of its trade marks must be rejected as unsubstantiated.
105    Furthermore, in the contested decision, the Board of Appeal found that there was no evidence that the intervener’s intention to file opposition or other actions against the applicant’s trade marks had any purpose other than that of defending and asserting its own rights. It must be stated that the applicant does not dispute that finding as such, given that it merely criticises the Board of Appeal for having considered that that finding was sufficient in itself to reject the application for a declaration of invalidity of the contested trade mark. It should be noted that the Board of Appeal did not reject that application for a declaration of invalidity solely on the basis of that finding, but also took account of other evidence in the context of an overall assessment of all the relevant factual circumstances. Accordingly, it has not been shown that the finding that the intervener pursued the objective of defending its own rights through the actions brought against the applicant’s trade marks was vitiated by an error of assessment.
106    As regards the evidence relied on before EUIPO to establish bad faith on the part of the intervener, the Board of Appeal noted that the decision of the China International Economic and Trade Arbitration Commission (Cietac) to declare void the supplementary licence agreements signed on 27 November 2002 and 10 June 2003, on the ground that they had been concluded as a result of a bribe, and that the decisions of the Chinese courts convicting a company linked to the intervener of false advertising and unfair competition against companies linked to the applicant were not relevant to an assessment of the intervener’s dishonest intention, given that those decisions concerned other rights in other jurisdictions. Furthermore, the Board of Appeal also found that a decision of the Intellectual Property Office of the Philippines of 23 May 2022, in which the intervener’s bad faith had been recognised in the context of the filing of a trade mark consisting of the three Chinese characters, was also not relevant for the purpose of assessing the intervener’s intentions at the time when the application for registration of the contested trade mark in the European Union was filed.
107    Contrary to the applicant’s submission, the Board of Appeal took those decisions into consideration, but found them to be irrelevant.
108    In that regard, it should be borne in mind that the trade mark regime of the European Union is an autonomous system, consisting of a set of rules and pursuing objectives which are specific to it and the application of which is independent of any national system (see judgment of 14 November 2013, Efag Trade Mark Company v OHIM (FICKEN), T‑52/13, not published, EU:T:2013:596, paragraph 42 and the case-law cited), with the result that decisions adopted by the national authorities of third countries cannot bind EUIPO’s bodies when applying Article 52(1)(b) of Regulation No 207/2009. Admittedly, while EUIPO is not bound by decisions made 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 (judgments of 29 June 2017, CIPRIANI, T‑343/14, EU:T:2017:458, paragraph 38, and of 13 December 2023, Good Services v EUIPO – ITV Studios Global Distribution (EL ROSCO), T‑381/22, not published, EU:T:2023:799, paragraph 33).
109    However, in the present case, as far as Cietac’s decision is concerned, it should be noted that the acts of corruption alleged against a person linked to the intervener’s predecessor date back to the conclusion of the additional licence agreements signed in 2002 and 2003. Moreover, those additional agreements annulled by Cietac did not concern the use of trade marks consisting of three Chinese characters outside Chinese territory. Consequently, the Board of Appeal was entitled, without making an error of assessment, to find that the decision of Cietac relied on by the applicant was not relevant for the purpose of assessing whether the intervener acted in bad faith when it filed the application for registration of the contested trade mark. As regards the decisions of the Chinese authorities relating to misleading advertising and unfair competition by companies linked to the intervener with regard to companies linked to the applicant, it should be noted that those decisions concerned legal and factual circumstances which did not relate to the registration of trade marks. Consequently, it was without committing an error of assessment that the Board of Appeal considered those decisions to be irrelevant. Furthermore, as EUIPO correctly points out, the fact that companies linked to the intervener may have acted dishonestly in a different context does not necessarily mean that the intervener was automatically acting in bad faith at the time of filing the application for registration of the contested trade mark in the European Union.
110    As regards the decision of the Intellectual Property Office of the Philippines of 22 May 2022, it is true that that decision upheld an application for a declaration of invalidity brought by the applicant in respect of a trade mark filed by the intervener in the Philippines on the ground that the latter had acted in bad faith. However, as the Board of Appeal noted, that decision of the Intellectual Property Office of the Philippines concerned different factual circumstances since there were no earlier trade mark registrations by the intervener in that jurisdiction, whereas such was the case in the European Union with registrations in France and the United Kingdom, for the period when the United Kingdom was still a Member State of the European Union. Moreover, the applicant has not shown that, in the trade mark law of that third country, the conditions for establishing the existence of bad faith coincided with those adopted in EU law, with the result that the conclusions drawn by that authority of a third country are not such as to demonstrate bad faith on the part of the intervener when it filed the application for registration of the contested mark.
111    Accordingly, the Board of Appeal was right to find that the Cietac decision, the decisions of the Chinese authorities and the decision of the Intellectual Property Office of the Philippines were irrelevant.
112    As regards the Board of Appeal’s finding that the fact that the applicant and the intervener were involved in disputes over a long period of time cannot, in itself, serve to establish bad faith on the part of the intervener, especially since, in the present case, the dispute at issue concerns the arrangements for the allocation of rights in the marks consisting of the three Chinese characters, rather than dishonest conduct on the part of the intervener, it should be noted that the applicant merely claims that that finding was not such as to enable the application for a declaration of invalidity to be dismissed. However, the applicant’s argument is not sufficient to call into question the merits of the Board of Appeal’s finding.
113    In the present case, given that the intervener’s predecessors were the legitimate proprietors, at least in Hong Kong, of a trade mark consisting of the three Chinese characters and given that the applicant has not demonstrated that the Board of Appeal had committed an error of assessment in finding that the intervener and its predecessors were not prevented from extending their rights to the territory of the European Union (see paragraphs 98 to 101 above), it must be held that, in the absence of legal provisions governing the manner in which rights over those trade marks are allocated outside the jurisdictions of China and Hong Kong, including within the European Union, the Board of Appeal could validly consider that the dispute between the applicant and the intervener concerning the allocation of the rights over those trade marks was not sufficient to establish bad faith on the part of the intervener.
114    As regards the Board of Appeal’s finding that the intervener’s intention to register the contested trade mark was part of a normal commercial strategy, it must be borne in mind that, according to the case-law, extending the protection of a national mark by having it registered as an EU trade mark forms part of the normal commercial strategy of an undertaking (judgment of 29 June 2017, CIPRIANI, T‑343/14, EU:T:2017:458, paragraph 45; see also, to that effect, judgment of 14 February 2012, Peeters Landbouwmachines v OHIM – Fors MW (BIGAB), T‑33/11, EU:T:2012:77, paragraph 23).
115    Thus, contrary to what the applicant claims, the fact that the intervener was already, at the time of filing the application for registration of the contested trade mark, the proprietor of marks consisting of the three Chinese characters in France and the United Kingdom could be taken into account by the Board of Appeal in order to find that the intervener had a legitimate interest in expanding its activities in the European Union.
116    Furthermore, the applicant cannot claim that the Board of Appeal concluded that there was no bad faith solely on the basis of the finding that the intervener was pursuing commercial logic and that that led it to take insufficient account of other relevant factors. In the contested decision, the Board of Appeal took into account, in the context of an overall examination, not only the long-standing and complex relationship between the applicant and the intervener, but also the evidence relied on before it in an attempt to demonstrate bad faith on the part of the intervener. In particular, it validly considered that, at the latest in 2002, the companies linked to the applicant were aware of the fact that the companies linked to the intervener owned trade marks consisting of the three Chinese characters in two Member States of the European Union (see paragraphs 96 and 97 above). It has not been demonstrated that the Board of Appeal had committed an error of assessment in finding that, in the course of the proceedings before it, the applicant had not called into question the content of the licence agreements signed in 1995 and on 23 November 2002 (see paragraph 98 above). Furthermore, the applicant has not adduced any admissible evidence before the Board of Appeal capable of establishing that the intervener was not authorised to use and register a trade mark consisting of the three Chinese characters in the territory of the European Union (see paragraphs 100 and 101 above). Thus, given that the evidence relied on by the applicant to demonstrate the intervener’s bad faith was validly dismissed on the ground that it did not concern relevant questions of law or factual situations (see paragraphs 106 to 111 above), the Board of Appeal could validly consider that, as a result of the intervener’s ownership of trade marks consisting of the three Chinese characters in two Member States of the European Union, there was a legitimate interest on the part of the intervener in expanding its activities in the European Union and, consequently, that the application for registration of the contested trade mark was motivated by the pursuit of commercial logic.
117    It follows from the foregoing considerations that the applicant has not shown that the Board of Appeal made an error of assessment in finding that there was no bad faith on the part of the intervener when it filed the application for registration of the contested trade mark.
118    The applicant’s other arguments are not such as to call that conclusion into question.
119    As regards the argument that the intervener is not the real successor of the branch of the family of the creator of the trade mark consisting of the three Chinese characters which had been granted the rights over that trade mark in Hong Kong on the ground that the Board of Appeal failed to take account of the ‘Letter of Administration’ of 28 August 1988 concerning the succession of Mr Wong Yue Hong, it must be noted that that letter was produced by the intervener before the Cancellation Division, which EUIPO does not dispute. However, at the hearing, the applicant acknowledged that the alleged infringement of that ‘Letter of Administration’ had not been raised before the Cancellation Division or the Board of Appeal.
120    It is settled case-law that, in invalidity proceedings based on an absolute ground for refusal, a registered EU trade mark is presumed to be valid, so that it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call the validity of that trade mark into question. Thus, the second sentence of Article 95(1) of Regulation 2017/1001, which consolidates the Court’s previous case-law (see, to that effect, judgment of 13 September 2013, Fürstlich Castell’sches Domänenamt v OHIM – Castel Frères (CASTEL), T‑320/10, EU:T:2013:424, paragraph 28), provides that, in invalidity proceedings brought on the basis of the applicant’s bad faith, EUIPO is to limit its examination to the grounds and arguments submitted by the parties (see judgment of 10 June 2020, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern), T‑105/19, not published, EU:T:2020:258, paragraph 23 and the case-law cited).
121    In so far as the present case forms part of invalidity proceedings based on absolute grounds for invalidity, both the Cancellation Division and the Board of Appeal were required to carry out an examination restricted to the pleas in law and arguments of the applicant and the intervener, without prejudice to the possibility of taking well-known facts into account (see, to that effect, judgments of 2 June 2021, Franz Schröder v EUIPO – RDS Design (MONTANA), T‑856/19, not published, EU:T:2021:311, paragraph 43, and of 19 October 2022, H&H v EUIPO – Giuliani (Swisse), T‑486/20, not published, EU:T:2022:642, paragraph 78).
122    Thus, in the present case, given that the alleged infringement of the ‘Letter of Administration’ relating to the arrangements for the succession of Mr Wong Yue Hong had not been raised before EUIPO’s bodies and since the arrangements for that succession do not constitute a well-known fact, the applicant cannot maintain that the Board of Appeal failed to examine the alleged infringement of that ‘Letter of Administration’.
123    For the same reasons, the line of argument that, in essence, the Board of Appeal did not take account of the unlawfulness of the assignment to the applicant of the trade marks consisting of the three Chinese characters, which were previously held by the company Wong Lo Kat, cannot succeed on account of the infringement of the provisions of clause No 4 of the agreement concluded on 23 November 2002 between that company and a company linked to the applicant. While it is true that it was apparent from those provisions that the company linked to the applicant had a right of pre-emption over the trade marks which were held by Wong Lo Kat, it must be noted, as the applicant acknowledged at the hearing, that the alleged infringement of that right of pre-emption was not relied on in the proceedings before the Cancellation Division or in the proceedings before the Board of Appeal. In so far as the right of pre-emption in favour of a company linked to the applicant is not a well-known fact, the applicant cannot criticise the Board of Appeal for failing to examine the alleged infringement of clause No 4 of the agreement of 23 November 2002.
124    As regards the argument that the Board of Appeal failed to find that Ms Wong Kin Yee’s affidavit, produced before the Cancellation Division, was fraudulent, it must also be noted that, as the applicant acknowledged at the hearing, the fraudulent nature of that affidavit was not raised in the proceedings before the Cancellation Division or in the proceedings before the Board of Appeal. Thus, given that the applicant’s argument does not concern a well-known fact, the Board of Appeal cannot be criticised for failing to examine the sincerity of that affidavit, all the more so since the applicant’s argument alleging links between Ms Wong Kin Yee and the company Golden Force Pharmacy is based, at least in part, on evidence declared inadmissible in paragraphs 33 and 35 above, namely the shareholder contract of Guangzhou WangLaoJi Pharmaceutical (new evidence No 1).
125    As regards the applicant’s argument that the fact that Ms Wong Kin Yee was subject to criminal sanctions and that she regularly behaved fraudulently constitute factual circumstances capable of proving that the application for registration of the contested trade mark was vitiated by bad faith, it should be noted that that argument is based on evidence declared inadmissible (see paragraphs 33 to 35 above). It follows that that line of argument must be rejected as unsubstantiated.
126    As regards the argument that, in essence, the intervener applied for registration of the contested trade mark without any intention to use it, it must be borne in mind that, although the applicant for a trade mark is not required to indicate or even to know precisely, on the date on which its application for registration of a mark is filed or of the examination of that application, the use it will make of the mark applied for, and although it has a period of five years for beginning actual use consistent with the essential function of that trade mark, the registration of a trade mark by an applicant without any intention of using it in connection with 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 207/2009. Such bad faith may, however, be established only if there is objective, relevant and consistent indicia tending to show that, when the application for 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 (judgments of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraphs 76 and 77, and of 28 October 2020, Target Ventures Group v EUIPO – Target Partners (TARGET VENTURES), T‑273/19, EU:T:2020:510, paragraph 35).
127    In the present case, it must be noted that the applicant does not rely on any evidence in the file to show that the intervener had no intention of using the contested trade mark when it filed the application for registration and it merely claims, in an abstract manner, that the intervener’s intention was not to use it as part of the functions of a trade mark. Nor does the applicant put forward any admissible evidence to show that the intervener’s intention was to prejudice its interests in a manner inconsistent with honest practices. It follows that the argument must be dismissed as unsubstantiated.
128    It follows from all the foregoing considerations that the part of the plea alleging errors of law and assessment in the examination of the claim relating to the ‘true owner of the mark’ must be rejected.
–       The part alleging errors of law and of assessment in the examination of the claim of ‘repetitive conduct’
129    The applicant submits that the Board of Appeal erred in law in interpreting Article 52(1)(b) of Regulation No 207/2009 too restrictively, in that it failed to take into account, directly or implicitly, the fact that the contested trade mark, which was almost identical to earlier EU trade mark No 8293714, had been filed six days before the expiry of the grace period of that mark and the fact that the filing of the contested mark did not bring any advantage to the intervener.
130    The applicant submits that the Board of Appeal should have examined the reason why the intervener had filed the application for registration of the contested mark only six days before the expiry of the grace period, when, visually, it differs from the earlier mark only in negligible elements.
131    The applicant submits that if the Board of Appeal had examined the decisive issues relating to the claim of ‘repetitive conduct’, it would have found that the Cancellation Division had erred in finding that the filing of the application for registration of the contested trade mark only six days before the expiry of the grace period could be regarded as a modernisation of the earlier mark.
132    According to the applicant, there is no commercial logic in modernising a ‘failed word mark’ registered as a figurative mark because of its distorted representation by filing the same Latin letters six days before the expiry of the grace period of the earlier mark. The applicant considers that such a practice poses a risk of circumvention of the legal consequences provided for in Article 18(1) of Regulation No 207/2009 (now Article 21 of Regulation 2017/1001).
133    The applicant submits that the earlier mark, in so far as it represents three Chinese characters of poor quality, can be compared to a ‘failed word mark’, which means that there is no commercial logic in modernising such a mark. Consequently, it considers that the possibility of filing a new application for registration of the mark representing the same Chinese characters with a better quality was intended solely to ‘extend’ the grace period of the earlier mark. Therefore, it considers that the Board of Appeal erred in applying the principles set out in the judgment of 13 December 2012, Pelikan (T‑136/11, not published, EU:T:2012:689).
134    The applicant submits that the intervener’s repetitive behaviour characterised by an application for registration of an almost identical sign is an indication of bad faith, since that sign offers no additional protection in relation to the earlier mark. According to the applicant, in order to determine whether the intervener acted in bad faith, the Board of Appeal had to take into account all the available evidence from which it could be concluded that it had or had not knowingly acted in a manner incompatible with accepted standards of honest and ethical behaviour. The applicant submits that the intervener cannot claim that it was not possible to file the earlier mark in an undistorted font, which constitutes a further element of the attempt to conceal its true intentions. Given that that mark had been filed in 2009, the applicant submits that it would not have been difficult to obtain the sign represented in the earlier mark with a better quality before filing the application.
135    EUIPO and the intervener dispute that line of argument.
136    In that regard, in the first place, it should be borne in mind that, as is apparent from paragraph 48 above, given that the applicant did not raise, before the Board of Appeal, any arguments seeking to call into question the Cancellation Division’s conclusions and findings relating to the claim of ‘repetitive conduct’, the Board of Appeal cannot be criticised for not having taken a position on arguments which had not been raised in the statement setting out the grounds of the appeal.
137    Furthermore, in view of the functional continuity between the various bodies of EUIPO and the Boards of Appeal, and having regard to the fact that the Board of Appeal endorsed the decision of the Cancellation Division (see paragraphs 41 and 42 above), it must be held that, in dismissing the appeal against the Cancellation Division’s decision in its entirety, the Board of Appeal necessarily took into consideration the findings and conclusions of the Cancellation Division, which are set out in detail in paragraph 11 of the contested decision. Consequently, it must be held that the part of the Cancellation Division’s decision concerning the claim of ‘repetitive conduct’ is an integral part of the contested decision.
138    In the second place, as regards the line of argument that the Board of Appeal interpreted Article 52(1)(b) of Regulation No 207/2009 too restrictively, at the hearing, the applicant confirmed that that line of argument sought to call into question the Board of Appeal’s findings and assessment and not the interpretation of that provision.
139    In the third place, it is necessary to examine whether the Board of Appeal made an error of assessment in upholding the Cancellation Division’s decision as regards the claim of ‘repetitive conduct’.
140    In that regard, it must be stated there is no provision in the legislation relating to EU trade marks which prohibits the re-filing of an application for registration of a trade mark and that, consequently, such a filing cannot, in itself, establish that there was bad faith on the part of the trade mark applicant, unless it is coupled with other relevant evidence which is put forward by the applicant for a declaration of invalidity or EUIPO (judgment of 21 April 2021, Hasbro v EUIPO – Kreativni Dogadaji (MONOPOLY), T‑663/19, EU:T:2021:211, paragraph 70).
141    In the present case, it should be noted that the contested trade mark represents the same three Chinese characters as those comprising earlier mark No 8293714. It should also be borne in mind that the application for registration of the contested trade mark was filed, in respect of goods identical to those covered by the earlier mark, only six days before the expiry of the period laid down in the first subparagraph of Article 15(1) of Regulation No 207/2009.
142    The applicant does not dispute the Cancellation Division’s finding, set out in the second and third indents of paragraph 11 of the contested decision, that, in view of the strict conditions governing the amendment of a trade mark application or the amendment of a registered mark, it would not have been possible to amend the application for registration of the earlier mark on the basis of Article 43(2) of Regulation No 207/2009 (now Article 49(2) of Regulation 1001/2017), nor would it have been possible to alter the representation of the earlier mark registered on the basis of Article 48 of Regulation No 207/2009 (now Article 54 of Regulation 2017/1001).
143    Accordingly, as the applicant rightly points out, where the proprietor of an EU trade mark files a repeat application for the same trade mark in order to avoid the consequences entailed by total or partial revocation of the earlier trade mark 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 (see, to that effect, judgment of 13 December 2012, Pelikan, T‑136/11, not published, EU:T:2012:689, paragraph 27).
144    However, as is apparent from paragraph 74 above, it is for the applicant for a declaration of invalidity to establish the circumstances which make it possible to conclude that the proprietor of an EU trade mark was acting in bad faith when it filed the application for registration of the contested trade mark.
145    It is therefore necessary to examine whether the applicant’s arguments are capable of rebutting the presumption of good faith on the part of the intervener when it filed the application for registration of the contested trade mark.
146    First, according to the case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element. As a consequence, the protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark (see judgment of 16 September 2013, Müller-Boré & Partner v OHIM – Popp and Others (MBP), T‑338/09, not published, EU:T:2013:447, paragraph 54 and the case-law cited). In addition, it is settled case-law that the specific presentation of such a mark is irrelevant. The specific representation of a word mark is not generally of such a nature as to alter the distinctive character of that mark as registered (see judgment of 23 September 2015, L’Oréal v OHIM – Cosmética Cabinas (AINHOA), T‑426/13, not published, EU:T:2015:669, paragraph 28 and the case-law cited).
147    It should be noted that the applicant has not demonstrated that a non-negligible part of the relevant public in the European Union knew the meaning of the three Chinese characters. Consequently, it must be held that the relevant public will not be able to verbalise or memorise those three Chinese characters, which will rather be perceived as meaningless, abstract signs or as decorative elements referring to China or Asia (see, to that effect, judgment of 19 October 2022, Castel Frères v EUIPO – Shanghai Panati (Representation of Chinese characters), T‑323/21, not published, EU:T:2022:650, paragraph 47). In the present case, the earlier mark and the contested trade mark are figurative marks, which corresponds to the format in which they were registered, with the result that they cannot be assimilated to word marks. Consequently, the applicant’s line of argument based on a comparison of the contested trade mark with the case of a ‘failed word mark’ cannot succeed in order to establish that the re-filing was intended to circumvent the time limit laid down in the first subparagraph of Article 18(1) of Regulation No 207/2009.
148    Secondly, the argument that, when filing the earlier mark in 2009, the intervener could have registered the trade mark consisting of the three Chinese characters in a better quality format cannot rebut the intervener’s presumption of good faith, nor can it establish bad faith on its part when filing the application for registration of the contested trade mark. Such a circumstance was such as to justify the filing of a new and better quality trade mark, as the applicant acknowledged at the hearing.
149    In that regard, it should be noted that, while it is true that the differences between the contested trade mark and the earlier mark are relatively limited given that they are the same three Chinese characters, the fact remains that, as the intervener points out, in relation to the earlier mark, which was blurred and poorly centred, the figurative sign of the mark applied for is better centred and the representation of the three Chinese characters is clearer. Consequently, in the circumstances of the present case, it must be held that the contested trade mark constitutes a modernisation of the earlier trade mark, with the result that the application for registration of the contested trade mark was justified by normal commercial practice.
150    In so far as the applicant does not rely on any evidence, other than that considered to be irrelevant in the context of the examination of the part of the plea alleging errors of law and of assessment in the examination of the claim relating to the ‘true owner of the mark’, capable of establishing that the contested trade mark was a repeat application seeking solely to avoid the loss of the rights attached to the earlier trade mark, it must be concluded that the applicant has not demonstrated that the Board of Appeal made an error of assessment in confirming the Cancellation Division’s findings and conclusions relating to the claim of ‘repetitive conduct’.
151    Thirdly, the mere fact that the application for registration of the contested mark was filed only six days before the expiry, in respect of the earlier mark, of the time limit laid down in the first subparagraph of Article 15(1) of Regulation No 207/2009 is not sufficient, in the absence of any other evidence to establish bad faith on the part of the intervener, to rebut the presumption of good faith enjoyed by the proprietor of the trade mark at issue when filing the application for registration of that mark.
152    It follows that the part of the plea alleging errors of law and assessment in the examination of the claim of ‘repetitive conduct’ must be dismissed.
153    Accordingly, the plea alleging infringement of Article 52(1)(b) of Regulation No 207/2009 must be dismissed.
154    It follows from all the foregoing considerations that the action must be dismissed in its entirety.
Costs
155    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 a hearing has taken place and 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.
156    In so far as the applicant’s request concerns the costs of the proceedings before the Board of Appeal, it is sufficient to note that, since the present judgment dismisses the action brought against the contested decision, it is the operative part of the contested decision which continues to determine the costs in question (see, to that effect, judgments of 4 October 2017, Intesa Sanpaolo v EUIPO – Intesia Group Holding (INTESA), T‑143/16, not published, EU:T:2017:687, paragraph 74, and of 27 January 2021, Turk Hava Yollari v EUIPO – Sky (skylife), T‑382/19, not published, EU:T:2021:45, paragraph 57).
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Guangzhou Wanglaoji Grand Health Co. Ltd to pay the costs.
Mastroianni
Brkan
Kalėda
Delivered in open court in Luxembourg on 9 July 2025.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.