JUDGMENT OF THE GENERAL COURT (Second Chamber)
9 June 2021 (*)
(EU trade mark – Invalidity proceedings – EU figurative mark RIVIERA AIRPORTS – 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‑396/20,
Aeroporto di Villanova d’Albenga SpA (Riviera-Airport), established in Villanova d’Albenga (Italy), represented by G. Casucci, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Capostagno, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Aéroports de la Côte d’Azur, established in Nice (France), represented by Y. Bizollon, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 24 April 2020 (Case
R 2172/2019‑4), relating to invalidity proceedings between Riviera-Airport and Aéroports de la Côte d’Azur,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović, President, F. Schalin (Rapporteur) and I. Nõmm, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 26 June 2020,
having regard to the response of EUIPO lodged at the Court Registry on 29 September 2020,
having regard to the response of the intervener lodged at the Court Registry on 25 September 2020,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 22 February 2017, the intervener, Aéroports de la Côte d’Azur, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the following figurative sign:
3        The goods and services in respect of which registration was sought are in Classes 35, 37, 39, 41 and
43 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 35: ‘Business assistance, management and administrative services; Business analysis, research and information services;
Advertising, marketing and promotional services’;
–        Class 37: ‘Vehicle repair, maintenance and refuelling’;
–        Class 39: ‘Packaging and storage of goods; Vehicle parking and storage; Transport; Parking and vehicle storage, mooring’;
–        Class 41: ‘Publishing and reporting; Education, entertainment and sport services; Education, entertainment and sports’;
–        Class 43: ‘Provision of food and drink; Restaurant services’.
4        The mark applied for was registered on 15 March 2018 under the number 16397309 in respect of the goods and services referred to in paragraph 3 above.
5        The registration was made after the rejection, by decision of the Opposition Division of 15 December 2017 in proceedings B 2901422, of an opposition filed on 25 May 2017 by the applicant, Aeroporto di Villanova d’Albenga SpA (Riviera-Airport), which, on that date, was named Aeroporto Villanova d’Albenga SpA. That opposition, which was based on the grounds set out in Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001), read in conjunction with Italian legislation, was rejected on the ground that the opponent had not established the scope of national law.
6        On 21 March 2018, the applicant filed with EUIPO an application for a declaration of invalidity in respect of the contested mark on grounds of bad faith, in accordance with the provisions of Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001) and, in the alternative, relied, first, on the grounds for invalidity laid down in Article 7(1)(b), (c), (g) and (i) of that regulation (now Article 7(1)(b), (c), (g) and (i) of Regulation 2017/1001), read in conjunction with Article 52(1)(b) of Regulation No 207/2009, and, second, on the ground for invalidity set out in Article 8(4), read in conjunction with Article 53(1)(c) of Regulation No 207/2009 (now Article 60(1)(c) of Regulation 2017/1001) and also invoked a number of provisions of Italian national law, including Article 12(1)(b) of the Italian Intellectual Property Code.
7        On 30 July 2019, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.
8        On 25 September 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division. That appeal was directed solely against the rejection of the application for a declaration of invalidity based on the ground of bad faith, within the meaning of Article 52(1)(b) of Regulation No 207/2009.
9        By decision of 24 April 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO upheld the decision of the Cancellation Division and dismissed the applicant’s appeal.
10      First of all, the Board of Appeal noted that there was no exhaustive definition or list of cases of bad faith, but that the most relevant types of cases were:
–        filing an application for a sign which is already used by another party with the aim of obstructing the goodwill created by that earlier use;
–        filing an application with the intention of extorting money or of urging third parties, under threat of legal sanctions, to abandon or transfer their marks;
–        abusing the trade mark systems for aims which do not correspond to the essential functions of trade marks and under reliance on merely formal positions.
11      As regards the first type of case, the Board of Appeal stated that the Lindt Goldhase case, which had given rise to the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361), had made it possible to identify certain factors to be taken into consideration, which include the fact that the trade mark applicant was aware of the use by a third party of an identical or similar mark for an identical or similar product, the intention of the trade mark applicant to prevent that third party from continuing to use such a sign, and the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.
12      Next, the Board of Appeal found that the applicant had not adduced evidence of earlier use in trade of the sign Riviera Airport as the name of an airport or of any actual air transport service provided by that airport.
13      Furthermore, the only document containing the name Riviera Airport was an internal document, namely the applicant’s plan for modernising and extending its airport, which had not been brought to the attention of the public.
14      The fact that there had been no prior use of the sign Riviera Airport by the applicant meant, logically, that the proprietor of the contested mark cannot have had ‘knowledge’ of such use.
15      The Board of Appeal also found that the degree of protection enjoyed by the applicant’s alleged Riviera Airport sign was zero, given that the latter did not own a company or trade name corresponding to that sign (it had actually adopted the name Riviera Airport SpA only after having been made aware of the filing of the application for registration of the contested mark by the intervener and had opposed that application), and it had not registered or applied to register any EU or national trade mark.
16      As regards the argument relating to the fiduciary relationship, the Board of Appeal found, in essence, that a trade mark applicant was not required to honour an intention to use a sign and that the communication of either an intention to use a trade mark or an interest in using a trade mark did not deprive an applicant of the opportunity to file that mark himself or herself. Furthermore, according to the Board of Appeal, at the date of the application at issue, there was no fiduciary relationship between the parties which would have required the intervener to honour the applicant’s plans and business projects.
17      As regards the allegation that the intervener did not intend to use the contested mark, the Board of Appeal noted that the intervener had a period of five years within which to begin actual use and that the absence of present use did not in itself give grounds for assuming that there was no intention to use it at the filing date.
18      Finally, the Board of Appeal rejected the applicant’s argument that sending a cease-and-desist letter was a sign of bad faith. That letter was sent by the intervener to the applicant after the filing of the application for registration of the contested mark and shortly before the applicant filed a notice of opposition. The letter did not demand that money be paid and was a normal step for a trade mark applicant to take in order to preserve his or her rights.
Forms of order sought
19      The applicant claims that the Court should:
–        annul the contested decision;
–        vary the contested decision;
–        order EUIPO to pay the costs.
20      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
21      As a preliminary point, it should be noted that, although the Board of Appeal states in the contested decision that it is applying the provisions of Regulation 2017/1001, those references should be understood, as regards the substantive rules, as in fact relating to the identical provisions of Regulation No 207/2009. Given the date on which the application for registration at issue was filed, namely 22 February 2017, which 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, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
22      Furthermore, 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 present dispute is governed by the procedural provisions of Regulation 2017/1001.
23      The applicant relies on five pleas in law in support of its action.
24      In the first, second, third and fifth pleas, the applicant alleges infringement of Article 52(1)(b) of Regulation No 207/2009, in that the Board of Appeal failed to interpret bad faith correctly and assessed the facts of the case in question in a manner that was both wrong and partial. Since those pleas overlap, the Court considers it appropriate to examine them together.
25      In the fourth plea, the applicant alleges that Article 12(2) 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) was misinterpreted and misapplied.
First, second, third and fifth pleas in law, alleging infringement of Article 52(1)(b) of Regulation No 207/2009
26      In the context of the first, second, third and fifth pleas, the applicant claims, in essence, that the Board of Appeal did not carry out a global assessment of all the relevant factors in the present case in order to determine whether the intervener had acted in bad faith at the time of filing the application for registration of the contested mark.
27      Specifically, according to the applicant, the Board of Appeal infringed the rule laid down in Article 52(1)(b) of Regulation No 207/2009 by limiting the scope of bad faith when filing a trade mark application to only a few very specific cases. It argues that the criteria suggested in the case giving rise to the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361), presuppose the existence of very specific factual and legal circumstances, which cannot be assumed in all cases. According to the applicant, it is not necessary for the applicant for a declaration of invalidity to be the proprietor of an earlier mark. The Board of Appeal also erred in not confirming that there was a commercial relationship between the parties on the basis of the factual circumstances of the present case, namely, first, the contact that was made in February 2017 (the letter of 20 February 2017 proposing a meeting, and the meeting held on 24 February 2017), which enabled the intervener to learn of the applicant’s intention to use the trade mark Riviera Airport for its new project and, second, an investment and services agreement concluded in 2012 between the applicant and Nice Airport Management, a subsidiary of the intervener. In addition, according to the applicant, the intervener has no legitimate interest in using the contested mark, whereas it is clear that the applicant has the intention of using the sign at issue imminently. Lastly, the applicant argues that the Board of Appeal failed to take into account other relevant factors, arising from the case-law, such as the identity or confusing similarity of the signs at issue, the knowledge of the use of an identical or confusingly similar sign, the existence of a fiduciary relationship, the timing of the filing of the application, the circumstances surrounding the mark’s creation and use or commercial logic, and the dishonest intention of the proprietor of the contested mark.
28      EUIPO and the intervener dispute the arguments put forward by the applicant in the context of those pleas.
29      As a preliminary point, it must be recalled that, under Article 52(1)(b) of Regulation No 207/2009, a Community trade mark is to be declared invalid on application to EUIPO where the applicant was acting in bad faith when he or she filed the application for the trade mark.
30      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 14 May 2019, Moreira v EUIPO – Da Silva Santos Júnior (NEYMAR), T‑795/17, not published, EU:T:2019:329, paragraph 16 and the case-law cited).
31      When interpreting the concept of bad faith, the Court of Justice has found previously that while, in accordance with its usual meaning in everyday language, bad faith presupposed the presence of a dishonest state of mind or intention, that concept had moreover to be understood in the context of trade mark law, which was that of the course of trade.
In that regard, it held that Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 2014 L 11, p. 1) and Regulations No 207/2009 and 2017/1001, which were adopted subsequently, had the same objective, namely the establishment and functioning of the internal market.
The rules on the EU trade mark are aimed, in particular, at contributing to the system of undistorted competition in the European Union, in which each undertaking must, in order to attract and retain customers 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 (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 45 and the case-law cited).
32      The Court of Justice inferred from this that the absolute ground for invalidity referred to in Article 52(1)(b) of Regulation No 207/2009 applied where it was apparent from relevant and consistent indicia that the proprietor of an EU trade mark had 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 recalled in paragraph 31 above (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 46 and the case-law cited).
33      The Court of Justice has also held that the intention of a trade mark applicant is a subjective factor which, however, had to be determined objectively by EUIPO. 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).
34      It is in the light of the foregoing considerations that the lawfulness of the contested decision must be assessed, with regard to the Board of Appeal’s finding that the intervener was not acting in bad faith when it filed the application for registration of the contested mark.
35      As regards the relevant date on which the alleged bad faith must be established, it is apparent from the wording of Article 52(1)(b) of Regulation No 207/2009 that that is the date on which the application for registration of the contested mark was filed, that is to say, 22 February 2017 (see, to that effect, judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraph 35).
36      In the present case, it must be found that the Board of Appeal, being aware that there was no exhaustive definition or list of cases of bad faith – as is apparent from paragraph 23 of the contested decision, as summarised in paragraph 10 above – merely mentioned the most frequent cases of bad faith, including the filing of an application for registration of a sign already used by a third party with the aim of obstructing the goodwill created by the earlier use of that sign, and, initially, it started its examination with that type of case.
37      In that regard, it should be noted, as observed by EUIPO and as is apparent from the administrative file in the case, that the applicant based its action for a declaration of invalidity principally on its earlier use of the unregistered sign Riviera Airport.
38      Thus, it is apparent from paragraphs 28, 32 and 33 of the contested decision that the Board of Appeal found, on the basis of the documents in the file, that (i) prior to the date on which the contested mark was filed, namely 22 February 2017, there was no airport called Riviera Airport in Italy, (ii) there was no evidence showing that an air transport service or any other commercially relevant service had actually been provided in that airport under the sign Riviera Airport and (iii) the activities carried out between September 2016 and July 2017 showed only the applicant’s preparatory activities with a view to potentially relaunching Albenga Airport under the name Riviera Airport.
39      In that regard, it should be noted that all the commercial documents, such as invoices or communications with the public, which the applicant submitted are associated either with the names Aeroporto Clemente Panero or Aeroporto di Villanova d’Albenga, or with the abbreviation AVA, and that it added the element ‘riviera airport spa’ to its company name only in July 2017, namely after initiating opposition proceedings. The Board of Appeal was also unable to find that either an article from the online encyclopaedia Wikipedia or email addresses had probative value since the content of the former could have been created or altered by anyone and there was no proof that the latter had been used in the context of a commercial or professional activity. The only document in the file in which the name Riviera Airport appears is an internal document relating to a modernisation plan referring to the airport with the names above; that plan was not communicated externally. On the basis of the evidence produced by the applicant, the Board of Appeal was able to find, correctly, that the applicant had not proved earlier use of the name Riviera Airport and that its mere plan to use that name in the future was not in itself conclusive for a presumption of bad faith.
40      Moreover, the applicant does not put forward any specific argument to show that the Board of Appeal did not correctly assess the evidence that had been submitted to it when it concluded that the documents submitted were not capable of proving actual use of the sign at issue.
41      Furthermore, it should be noted, in that regard, that, in the context of the present action, the applicant now emphasises the fact that earlier use is not relevant. The applicant’s argument that it is not necessary for an applicant for a declaration of invalidity to be the proprietor of an earlier mark is a new argument which it did not put forward during the administrative procedure. Accordingly, given that invalidity proceedings before EUIPO are characterised by an examination based on the pleas in law and arguments raised by the parties, the applicant cannot criticise the Board of Appeal for having assessed the factual circumstances of the case on the basis of the arguments and evidence which it had itself submitted and, therefore, for having focused on claims concerning the use of the sign Riviera Airport.
42      In any event, as the applicant has argued and as is apparent from paragraph 52 of the judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO (C‑104/18 P, EU:C:2019:724), since the use of an earlier right by a third party on the internal market, at the time of application for registration of a mark, is not an absolute condition in order to rely on bad faith, it is necessary to examine whether, in the present case, irrespective of the question of whether there had been earlier use by the applicant, the intervener’s bad faith at the time when it lodged the application for registration may be established by other ‘factual circumstances’ which may constitute ‘objective, relevant and consistent indicia’ in accordance with the case-law referred to in paragraphs 32 and 33 above.
43      In that regard, it must be held that the Board of Appeal did examine other factual circumstances. As a second step, the Board of Appeal focused its examination on the applicant’s arguments relating to the alleged fiduciary relationship between the applicant and the intervener.
44      In that context, according to the applicant, the existence of an earlier cooperation agreement between the applicant and a subsidiary of the intervener establishes that there had been a business and fiduciary relationship between the parties, in the context of which the ‘Riviera Airport Project’ design master plan was sent and a meeting was held, and, as a consequence, the intervener should have refrained from applying to register the contested mark.
45      As the Board of Appeal correctly explained in paragraphs 43 to 54 of the contested decision, neither the contact which was made in February 2017 between the applicant and the intervener nor an investment agreement allow it to be concluded that there was a fiduciary relationship which required the intervener to refrain from applying to register the contested mark or, consequently, that the latter acted in bad faith.
46      As regards the contact which was made in February 2017, it must be noted that that contact is based on the letter of 20 February 2017, sent by A (director and new owner of the applicant) to B (CEO of Aéroports de la Côte d’Azur), in which A wrote that the airport Villanova of Albenga had been privatised and that he was the new owner of it. The following day, A also sent two copies of a design master plan for the ‘Riviera Airport’ project and expressed his hope of having a productive meeting on Friday 24 February. It is apparent from a cease-and-desist letter of 19 May 2017 sent by the intervener to the applicant that that meeting took place and that, during that meeting, the applicant sought the intervener’s consent to use the sign Riviera Airport, which the intervener categorically refused to give.
47      As regards the existence of an earlier cooperation agreement concluded between the applicant and a subsidiary of the intervener, it must be held, as the Board of Appeal found, that that agreement is irrelevant in so far as that agreement, which was entered into at the end of 2012 and the term of which ended in 2014, contains nothing capable of affecting the present case or the contested sign. It follows that there was no obligation on the intervener to refrain from applying to register the contested mark.
48      In the third place, the Board of Appeal examined the intervener’s intention to use the contested mark.
49      According to the applicant, the Board of Appeal limited its assessment of the intervener’s intention to use the contested mark to irrelevant considerations, such as the genuine and legitimate interest of the proprietor of the mark in the light of its geographical location, the fact that the proprietor of a mark has a period of five years after its registration in order to begin actual use of that mark, and the fact that sending a cease-and-desist letter to the applicant remains within the normal scope of preserving its rights as an EU trade mark applicant.
50      According to the applicant, other factors are more relevant, namely, first, the fact that the intervener has neither a real nor a legitimate interest whatsoever in using the contested mark, while, additionally, its geographical location is not decisive, second, the fact that the contested mark is not used presently, which, in spite of the rule that genuine use must begin within five years, reveals bad faith, and, third, the fact that sending a cease-and-desist letter is a sign of bad faith, since it shows the intervener’s intention to prevent the applicant from entering the market.
51      In the first place, it is apparent from paragraph 55 of the contested decision that, for the Board of Appeal, the intervener’s geographical location was not the decisive factor for concluding that there was no bad faith when the application to register the contested mark was filed. In that regard, the Board of Appeal merely concluded that the intervener, which is based on the French part of the Riviera, had an equally genuine and legitimate interest as the applicant (which is based on the Italian part of Riviera) in using the sign comprising the mark at issue.
52      The Board of Appeal also took into account the fact that the intervener was the proprietor of various national trade mark registrations, namely French trade marks, with the same structure as the contested mark, specifically marks consisting, inter alia, of a figurative element resembling a stylised palm tree associated with the word ‘airport’ and the name of a place (Aéroport Nice-Côte d’Azur, Aéroport Cannes-Mandelieu, Aéroport Golfe de Saint-Tropez).
53      It follows from the above, as EUIPO has argued and contrary to what is claimed by the applicant, that there is a commercial strategy on the part of the intervener which entails protecting trade marks by registering them. The fact that the contested mark had the same structure as the earlier marks registered by the intervener since 2010 shows a coherent business strategy. Lodging an application to register the contested sign as an EU trade mark which contains the word ‘airport’ in English and the word ‘riviera’ is part of that strategy.
54      In the second place, as regards the applicant’s argument alleging that the contested mark is not used, it must be borne in mind that it was registered on 15 March 2018, whereas the application for a declaration of invalidity was filed on 21 March 2018. As the Board of Appeal observed in paragraph 55 of the contested decision, the proprietor of a trade mark has a period of five years within which to begin actual use consistent with the essential function of a trade mark (see judgment of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 76 and the case-law cited). According to the same case-law, the applicant is not required to indicate or even to know precisely, on the date on which his or her application for registration of a mark is filed or of the examination of that application, the use he or she will make of the mark applied for, and he or she has a period of five years for beginning actual use consistent with the essential function of that trade mark. It is only where there is no justification for the application to register the mark that the absence of intention to use it may constitute bad faith. Such bad faith may, however, be established only if there are 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 (see judgment of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 77).
55      The fact that, when the contested decision was adopted, the intervener was yet to use the contested mark does not mean that it did not intend to use it.
56      The Board of Appeal was therefore right to find, in its assessment, that the mere fact that the contested mark was not being used at that time could not be interpreted as meaning that the intervener had no intention of using that mark at the time it was filed, especially since it had shown that it had a genuine and legitimate interest in using the mark at issue, in particular in the light of the commercial strategy referred to in paragraph 53 above.
57      In the third place, nor can the Court uphold the applicant’s argument that the cease-and-desist letter must, in the present case, be regarded as a relevant factor in the assessment of bad faith which confirms the intervener’s intention to prevent the applicant from entering the market. In that regard, it is sufficient to recall the case-law according to which the fact that the proprietor of an EU trade mark has sent a cease-and-desist letter to the applicant for a declaration of invalidity of that EU trade mark is not in itself sufficient to establish bad faith, since such a request falls within the scope of the rights attaching to the registration of a mark
(judgment of 14 February 2012, Peeters Landbouwmachines v OHIM – Fors MW (BIGAB), T‑33/11, EU:T:2012:77, paragraph 33). In addition, in the present case, as has already been stated in paragraph 53 above and as is apparent from the documents in the file, the intervener filed the application to register the contested mark in order to consolidate its earlier legitimate interests, the use of the name Riviera having a link with its airport activities.
58      Nor, lastly, can the other arguments put forward by the applicant establish the intervener’s dishonest intention.
59      As regards the applicant’s arguments that its intention to use the sign Riviera Airport was real and honest at the time when it filed the application to register the contested mark and that it had a real strategy to establish the pre-eminence of that mark on the market, it must be observed that those arguments are irrelevant in the context of the assessment of bad faith on the part of the proprietor of the mark at issue.
60      As regards the argument based on the chronology of events relating to the filing of the application to register the contested mark, it is indeed true that that filing took place after the applicant presented the modernisation plan for its airport to the intervener. However, it must be noted that, when it took the initiative to contact the intervener, the applicant neither stated that the underlying reason why it made contact was to seek consent to use the sign Riviera Airport, nor stated that there was a link between its airport modernisation plan and the use of the sign at issue. The consent sought from the intervener shows rather that the applicant was aware that it would be difficult for it to use that sign. The mere fact that the intervener was aware of the applicant’s new airport plan the day before it filed the application to register the contested mark is not in itself sufficient for that application to be declared invalid on the ground of bad faith, particularly as it appears that the application for registration of the contested mark forms part of the intervener’s overall strategy.
61      In that regard, it is not apparent from the file before the Court that the application to register the mark contested by the intervener stems solely from a dishonest intention of preventing the applicant from entering the market. As is apparent from the foregoing considerations, there is a certain commercial logic in the intervener’s approach, given that the airport services of the three airports it operates are provided under the name Aéroport Côte d’Azur. Thus, it cannot be ruled out that those airports, which are situated on the French side of Riviera, may be regarded by the international public as forming part of a whole that is referred to as Riviera Airports, in particular as there are a number of earlier registrations of trade marks relating to signs including the words ‘riviera’ or ‘riviera airport’ and to an information magazine with the name ‘Riviera News’. The argument that the intervener simply added the word signs AIRPORT RIVIERA, RIVIERA AIRPORT and RIVIERA AIRPORTS to a sign which already exists with the sole aim of preventing the applicant from using the sign composed of the words ‘riviera’ and ‘airport’ is therefore unconvincing.
62      In short, even assuming that the use of the earlier sign relied on is not a necessary condition for demonstrating bad faith, it must be held that the Board of Appeal, in its global assessment, took into consideration all the relevant factual circumstances as they stood at the time when the application was filed and that those circumstances do not support the conclusion that the intervener acted in bad faith.
63      Therefore, the applicant’s arguments relating to the intervener’s dishonest intention cannot succeed.
64      It follows from the foregoing that the first, second, third and fifth pleas in law must be rejected.
Fourth plea in law, alleging misinterpretation and misapplication of Article 12(2) of Delegated Regulation 2018/625
65      According to the applicant, the Board of Appeal erred in finding that the application for a declaration of invalidity did not comply with Article 12(2)(a) and (c) of Delegated Regulation 2018/625, read in conjunction with Article 2(2)(b)(iv) and (g) of that regulation, in that it did not indicate the goods and services on which the application for a declaration of invalidity was based. Article 12(2) of Delegated Regulation 2018/625 specifically concerns an application for a declaration of invalidity based on relative grounds, whereas, in the present case, the application for a declaration of invalidity is based on an absolute ground, namely bad faith, which falls solely under Article 12(1) and Article 16(1)(a) of Delegated Regulation 2018/625.
66      Consequently, according to the applicant, the application for a declaration of invalidity must be regarded as well founded, since the applicant has explained and proved that it operated, and continues to operate, an airport in Italy under the name Riviera Airport and that the intervener also operated airports,
the latter’s being in France, and registered the contested mark for services which are indirectly linked to the operation of an airport, such as ‘transport’ services. Consequently, a finding of bad faith at the time when the application for registration of the contested mark was filed would in itself mean that that mark was invalid in its entirety. Hence, there is no reason to indicate the specific classes of service on which the application for a declaration of invalidity is based.
67      EUIPO and the intervener dispute the applicant’s arguments.
68      It must be held, as observed by EUIPO and the intervener, that the argument put forward by the applicant in the fourth plea is based on a misreading of the contested decision.
69      It is apparent from paragraphs 25 and 26 of the contested decision that the Board of Appeal refers to Article 12(2) of Delegated Regulation 2018/625, which lays down the conditions for an application for a declaration of invalidity based on relative grounds for invalidity, as part of the background to the dispute connected with the applicant’s initial application before the Cancellation Division, in which it relied, inter alia, on Article 8(4) of Regulation No 207/2009, on the basis of earlier rights used in the course of business in Italy.
70      Accordingly, the Board of Appeal did not err in referring to that relative ground for invalidity relied on by the applicant before the Cancellation Division, recalling the accompanying requirements and stating that the applicant, in any event, had not adduced evidence of earlier use of the sign on which it relied.
71      Furthermore, regardless of whether the application for a declaration of invalidity is based on a relative or an absolute ground, it is apparent from Article 52(3) and Article 53(5) of Regulation No 207/2009 and from the case-law that, where the ground for invalidity exists in respect of only some of the goods or services for which the contested mark is sought to be registered, the trade mark is to be declared invalid as regards those goods or services only (see, to that effect, judgment of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 80). Therefore, contrary to what the applicant claims, upholding the action on the basis of bad faith does not automatically mean that the mark is invalid in its entirety.
72      In any event, since the first, second, third and fifth pleas have been rejected because the relevant factual circumstances as a whole do not support the conclusion that the intervener acted in bad faith, the applicant’s arguments summarised in paragraph 66 above are ineffective.
73      It is clear from the above that the fourth plea must be rejected.
74      It follows from all of the foregoing that the action must be dismissed in its entirety, without it being necessary to rule on the applicant’s second head of claim, in which it requests that the Court vary the contested decision.
Costs
75      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
76      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Aeroporto di Villanova d’Albenga SpA (Riviera-Airport) to pay the costs.
Tomljenović
Schalin
Nõmm
Delivered in open court in Luxembourg on 9 June 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.