JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
20 March 2024 (*)
(EU trade mark – Invalidity proceedings – EU figurative and word marks nehera, NEHERA and NEHERA PRAGUE – Absolute ground for invalidity – No bad faith – Article 52(1)(b) of Regulation (EC) No 207/2009 (now Article 59(1)(b) of Regulation (EU) 2017/1001))
In Cases T‑334/23 to T‑337/23,
Isabel Nehera, residing in Sutton, Ontario (Canada),
Natacha Sehnal, residing in Montferrier-sur-Lez (France),
Jean-Henri Nehera, residing in Burnaby, British Columbia (Canada),
represented by W. Woll, lawyer,
applicants,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Ladislav Zdút, residing in Bratislava (Slovakia), represented by Y. Echevarría García, lawyer,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk (Rapporteur), President, E. Buttigieg and G. Hesse, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
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 actions 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
1        By their actions under Article 263 TFEU, the applicants, Ms Isabel Nehera, Ms Natacha Sehnal and Mr Jean-Henri Nehera, seek annulment of the decisions of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 April 2023 (Cases
R 1216/2020-4 to
R 1219/2020-4) (‘the contested decisions’).
Background to the dispute
2        On 6 May 2013 (Case T‑334/23), 7 March 2014 (Case T‑336/23), 23 April 2014 (Case T‑335/23) and 2 June 2017 (Case T‑337/23), the intervener, Mr Ladislav Zdút, filed applications for registration of EU trade marks 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 trade marks in respect of which registration was sought are:
–        in Case T‑334/23, the following figurative sign (‘the first contested mark’):
–        in Cases T‑335/23 and T‑337/23, the following figurative sign (‘the second contested mark’ and ‘the fourth contested mark’):
–        in Case T‑336/23, the word sign NEHERA PRAGUE (‘the third contested mark’):
4        The goods in respect of which registration was sought vary depending on the contested marks and are within Classes 3, 14, 18, 24 and 25 within the meaning 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. Those goods
consist, in particular, of
clothing, footwear, headgear, umbrellas and parasols, walking sticks, bed covers, table covers, fabrics, travelling bags, bags, leather goods, jewellery, perfumery and essential oils.
5        The first of the contested marks
was registered on 31 October 2014, the second
on 10 September 2014, the third
on 1 July 2014 and
the fourth
on 21 September 2017, in respect of the goods referred to in paragraph 4 above.
6        On 17 June 2019, the applicants filed applications for a declaration of invalidity against the contested marks, in accordance with the provisions of Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001), in respect of all the goods designated by those marks. They claimed that the intervener was acting in bad faith when he filed the application for registration of the contested marks. They stated, inter alia, that their grandfather, Mr Jan Nehera, had established in Czechoslovakia, in the 1930s,
a business marketing clothing and accessories and had filed and used a national mark identical to the contested mark (‘the former Czechoslovak trade mark’).
7        By decisions of 22 April 2020, the Cancellation Division of EUIPO dismissed the applications for a declaration of invalidity, on the ground that the intervener’s bad faith when he filed the contested marks had not been established.
8        On 15 June 2020, the applicants filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decisions of the Cancellation Division.
9        By decision of 10 March 2021 (Case
R 1216/2020-2; ‘the decision of 10 March 2021’), the Second Board of Appeal of EUIPO upheld the applicants’ appeal against the decision of the Cancellation Division as regards the first contested mark, annulled that decision and declared that mark invalid. In essence, it noted that the former Czechoslovak trade mark was a well-known clothing brand and had been put to genuine use in Czechoslovakia in the 1930s. It held
that the applicant was aware of the existence and celebrity both of Mr Jan Nehera and of the former Czechoslovak trade mark, which retained a certain surviving reputation. It also stated that the applicant had attempted to create an association between himself and that former Czechoslovak trade mark. In those circumstances, the Second Board of Appeal considered that the applicant’s intention was to take unfair advantage of the reputation of Mr Jan Nehera and of the former Czechoslovak trade mark. It found that the applicant was acting in bad faith when he filed the application for registration of the contested mark.
10      By contrast, the Second Board of Appeal of EUIPO did not rule, at that time, on the applicants’ appeals against the decisions of the Cancellation Division with regard to the three other contested marks.
11      By application lodged at the Registry of the General Court on 10 May 2021, the intervener brought an action for annulment against the decision of 10 March 2021. That action was registered as Case T‑250/21.
12      By judgment of 6 July 2022, Zdút v EUIPO – Nehera and Others (nehera) (T‑250/21; ‘the annulment judgment’, EU:T:2022:430), the General Court annulled the decision of 10 March 2021. In that regard, it considered, in essence, that, at the date of the application for registration of the first contested mark, the former Czechoslovak trade mark and the name of Mr Jan Nehera were no longer registered or protected, that they had not been used in Europe since 1946,
and that they were not well known among the relevant public, made up of the general public of the European Union (annulment judgment, paragraphs 38, 42 to 53 and 56). In particular, it found that the applicants had not provided proof that, in 2013, that mark still enjoyed a certain reputation in the Czech Republic, Slovakia or in other Member States or that that name was still famous among a significant portion of the relevant public (annulment judgment, paragraph 53). In those circumstances, having regard in particular to the absence of surviving reputation in respect of the former Czechoslovak trade mark and of current celebrity in respect of Mr Jan Nehera’s name,
the Court ruled that the applicants had not established that the intervener had intended to take unfair advantage of the reputation of that mark or of the celebrity of that person, nor, consequently, that he had been acting in bad faith when he filed the application for registration of the contested mark (annulment judgment, paragraphs 59, 78 and 79).
13      Following the annulment judgment, the applicants produced, in each of the cases pending before the Second Board of Appeal, a document entitled ‘Appeal – Additional grounds’, accompanied by three new items of evidence (‘the new items of evidence’).
14      On 17 April 2023, the Fourth Board of Appeal of EUIPO, to which those cases had been reassigned (‘the Board of Appeal’), adopted the contested decisions, by which it dismissed the applicants’ appeals against the decisions of the Cancellation Division.
15      On that occasion, the Board of Appeal, in the first place, rejected the new items of evidence as inadmissible (see paragraphs 41 to 52 of the contested decision in Case T‑334/23 and paragraphs 36 to 42 of the contested decisions in Cases T‑335/23 to T‑337/23).
16      The Board of Appeal, in the second place, considered, by essentially reproducing the reasoning set out in the annulment judgment, that the applicants had not established that the intervener had been acting in bad faith when he filed the application for registration of the contested marks (see paragraphs 53 to 118 of the contested decision in Case T‑334/23 and paragraphs 43 to 106 of the contested decisions in Cases T‑335/23 to T‑337/23). In that regard, it stated that, assuming that they were admissible, the new items of evidence were insufficient to demonstrate bad faith on the part of the intervener. Those items of evidence did not establish the relevant public’s actual knowledge of the former Czechoslovak trade mark or of Mr Jan Nehera at the dates of the applications for registration of the contested marks nor did they demonstrate that the intervener had been driven by a dishonest state of mind or intention when he filed those applications (see paragraphs 115
and 116 of the contested decision in Case T‑334/23 and paragraphs 103
and 104 of the contested decisions in Cases T‑335/23 to T‑337/23).
Forms of order sought
17      The applicants claim, in essence, that the Court should:
–        annul the contested decisions;
–        order EUIPO to pay the costs, including those relating to the proceedings before the Board of Appeal of EUIPO.
18      EUIPO contends that the Court should:
–        dismiss the actions;
–        order the applicants to pay the costs in the event that an oral hearing is convened.
19      The intervener contends, in essence, that the Court should:
–        dismiss the actions;
–        order the applicants to pay the costs, including those relating to the proceedings before EUIPO.
Law
Joinder
20      Pursuant to
Article 19(2) of the Rules of Procedure of the General Court, the President of the Seventh Chamber of the General Court referred the decision as to whether the present cases should be joined for the purposes of the decision closing the proceedings, which fell within her remit, to the Seventh Chamber of the General Court.
21      The main parties having been heard in relation to the joinder of the present cases for the purposes of the decision closing the proceedings and not having objected in that regard, the Court considers that it is appropriate to join the cases on account of the connection between them, in accordance with Article 68 of the Rules of Procedure.
The merits of the actions
22      In support of the actions, the applicants put forward two pleas in law, the first alleging, in essence, infringement of Article 47 of the Charter of Fundamental Rights of the European Union (‘the Charter’) and of Article 6 of the European Convention for the Protection of Human Rights and Fundamental Freedoms, signed in Rome on 4 November 1950 (‘ECHR’),
the second alleging infringement of Article 52(1)(b) of Regulation No 207/2009.
23      EUIPO and the intervener dispute the applicants’ arguments.
24      In the circumstances of the present case, it is appropriate to examine the second plea first, then the first plea.
The second plea in law, alleging infringement of Article 52(1)(b) of Regulation No 207/2009
25      By their second plea, the applicants claim, in essence, that the new items of evidence, read in conjunction with the evidence previously submitted, demonstrate that the former Czechoslovak trade mark and the name of Mr Jan Nehera were still known in the Czech Republic at the dates of the applications for registration of the contested marks.
26      In that regard, it should be noted that the new items of evidence include three articles published on the internet between 2010 and 2013.
27      The first article, published on a website listing industrial sites in the Czech Republic, is devoted to buildings occupied by Mr Jan Nehera’s undertaking in the 1930s and 1940s, then by a state enterprise and finally by a shopping centre. It states that a demolition notice was issued for those buildings in the early 2010s, which caused a wave of disapproval from local residents.
28      The second article, taken from a Czech online newspaper, is entitled ‘Jan Nehera: The Baťa from Prostějov’.
That article is devoted to the history of Mr Jan Nehera and his undertaking, first in Czechoslovakia and Europe in the 1930s and 1940s, then in Morocco and Africa in the 1940s and 1950s. It states inter alia that the advertising slogan ‘Nehera knows how to make clothes’ was known everywhere and by everyone.
29      The third article, taken from another Czech online newspaper, is devoted to the history of the undertaking Rolný, operating in the clothing sector and also established in Prostějov (Czech Republic). That article states that Rolný and Mr Jan Nehera’s competing undertaking together dominated the ready-to-wear market during the First Czechoslovak Republic. It describes Mr Jan Nehera’s undertaking as being a ‘second Baťa of Prostějov’ and states that its advertising slogan, already mentioned in the second article, was known throughout the country.
30      In the light of their content, those three articles, and the last two
in particular, do admittedly tend to confirm that the former Czechoslovak trade mark and the name of Mr Jan Nehera enjoyed a certain reputation or celebrity in Czechoslovakia in the 1930s and 1940s.
31      However, those three articles do not contain any concrete and detailed evidence attesting to the persistence of the reputation of the former Czechoslovak trade mark or the celebrity of the name of Mr Jan Nehera in the Czech Republic (and not only in Prostějov) at the dates of the applications for registration of the contested marks, namely in the 2010s, approximately seven decades later.
32      Contrary to what the applicants claim, neither the persistent attachment of Prostějov’s inhabitants to buildings formerly occupied by Mr Jan Nehera’s undertaking, nor the interest shown by nationally distributed online newspapers in Mr Jan Nehera and the former Czechoslovakian trade mark as well as the comparison made between that mark and the Baťa shoe brand nor the reference to Mr Jan Nehera and the former Czechoslovakian trade mark without further explanation is sufficient to establish that that person and that mark were still known to a significant part of the general Czech public during the 2010s.
33      Consequently, even read in conjunction with the evidence previously submitted by the applicants and examined by the Court in the annulment judgment, the new items of evidence do not make it possible to call into question the Board of Appeal’s finding that the applicants had not provided proof that, in the 2010s, the former Czechoslovak trade mark and the name of Mr Jan Nehera still enjoyed a certain reputation or celebrity in the Czech Republic or in other Member States (see paragraph 92 of the contested decision in Case T‑334/23 and paragraph 81 of the contested decisions in Cases T‑335/23 to T‑337/23).
34      It follows that the Board of Appeal did not make an error of assessment in finding that the new items of evidence did not contain any information establishing actual knowledge of the former Czechoslovak trade mark or of Mr Jan Nehera by the relevant public at the dates of the applications for registration of the contested marks and, consequently, did not demonstrate bad faith on the intervener’s part (see paragraph 16 above).
35      Accordingly, the second plea in law should be rejected as unfounded.
The first plea in law, alleging infringement of Article 47 of the Charter and of Article 6 ECHR
36      By their first plea, the applicants claim, in essence, that, by rejecting the new items of evidence as inadmissible, the Board of Appeal violated the right to a fair trial and, in particular, first, the adversarial principle and, secondly, the right of the parties to be heard.
37      In that regard, it should be borne in mind that, where some of the grounds given in a decision are, by themselves, sufficient to justify that decision in law, errors which might invalidate other grounds of the decision do not, in any event, have any effect on its operative part. It is, moreover, settled case-law that a plea which, even if it were well founded, is incapable of bringing about the annulment which the applicant seeks must be rejected as ineffective (see judgment of 14 December 2005, Honeywell v Commission, T‑209/01, EU:T:2005:455, paragraph 48 and the case-law cited; judgment of 15 September 2021, France v ECHA, T‑127/20, not published, EU:T:2021:572, paragraph 32).
38      In the present case, it is common ground that the Board of Appeal did not merely reject the new items of evidence as inadmissible. It also stated that, assuming that they were admissible, the new items of evidence were insufficient to demonstrate bad faith on the part of the intervener (see paragraph 16 above).
39      It follows from the examination of the second plea that the Board of Appeal correctly considered that, even taking into account the new items of evidence, bad faith on the part of the intervener had not been demonstrated. That reason alone is sufficient to justify
the contested decisions.
40      It follows that, even assuming that the Board of Appeal incorrectly considered that the new items of evidence were inadmissible, such unlawfulness cannot justify annulling the contested decisions.
41      Accordingly, the first plea in law must be rejected as ineffective.
42      It follows from the foregoing that the actions must be dismissed.
Costs
43      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.
44      Since the applicants have been unsuccessful, they must be ordered to bear their own costs and to pay those incurred by the intervener, in accordance with the forms of order sought by the latter. However, since EUIPO has applied for the applicants to be ordered to pay the costs only in the event that a hearing is convened, it must, in the absence of organisation of a hearing, be ordered to bear its own costs.
45      Furthermore, the intervener has claimed that the applicants
should be ordered to pay the costs incurred for the purposes of the proceedings before EUIPO. In that regard, it is sufficient to state that, in any event, since the present judgment is dismissing the actions against the contested decisions, it is point 2 of the operative part of those decisions which continues to determine the costs incurred in the cancellation proceedings and in the appeal proceedings before EUIPO (see judgment of 20 January 2021, Stada Arzneimittel v EUIPO – Optima Naturals (OptiMar), T‑261/19, not published, EU:T:2021:24, paragraph 77 and the case-law cited).
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Joins Cases T‑334/23 to T‑337/23 for the purposes of the judgment;
2.      Dismisses the actions;
3.      Orders Ms Isabel Nehera, Ms Natacha Sehnal and Mr Jean-Henri Nehera to bear their own costs and to pay those incurred by Mr Ladislav Zdút before the General Court;
4.      Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Kowalik-Bańczyk
Buttigieg
Hesse
Delivered in open court in Luxembourg on 20 March 2024.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.