JUDGMENT OF THE GENERAL COURT (Third Chamber)
13 July 2022 (*)
(EU trade mark – Invalidity proceedings – EU figurative mark GUGLER – Absolute ground for invalidity – No bad faith – Article 51(1)(b) of Regulation (EC) No 40/94 (now Article 59(1)(b) of Regulation (EU) 2017/1001))
In Case T‑147/21,
Gugler France, established in Les Auxons (France), represented by A. Grolée, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Alexander Gugler, residing in Maxdorf (Germany), represented by M.‑C. Simon, lawyer,
THE GENERAL COURT (Third Chamber),
composed of G. De Baere (Rapporteur), President, V. Kreuschitz and G. Steinfatt, Judges,
Registrar: A. Juhász‑Tóth, Administrator,
having regard to the written part of the procedure,
further to the hearing on 10 May 2022,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Gugler France, seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 9 December 2020 (Case R 893/2020‑5) (‘the contested decision’).
Background to the dispute
2        On 31 August 2005, Gugler GmbH, the predecessor in title of the intervener, Mr Alexander Gugler, obtained from EUIPO the registration, under No 3324902, of the following EU figurative mark (‘the contested mark’):
3        Application for that registration had been filed on 25 August 2003.
4        The goods and services in respect of which the contested mark was registered are, following a restriction, in Classes 19, 37 and 42 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 19: ‘Windows, roofing, doors, gates, shutters, roller blind boxes of glass and plastic; glazings, namely conservatories, conservatory roofs; light protection devices, namely folding shutters and roller blinds of plastic’;
–        Class 37: ‘Window construction services, namely fitting of doors, gates and windows’;
–        Class 42: ‘Window construction services, namely planning of doors, gates and windows’.
5        On 25 November 2008, the contested mark was transferred from Gugler GmbH to the intervener. On 15 December 2009, the licence for use of the contested mark, granted by the intervener to Gugler GmbH, was registered by EUIPO.
6        On 17 November 2010, the applicant submitted an application for a declaration of invalidity of the contested mark in respect of all the goods and services covered by it. That application was based, first, on the contention that the proprietor of the contested mark had acted in bad faith when it filed the application for the trade mark, within the meaning of Article 52(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (now Article 59(1)(b) of 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)) and, second, on the applicant’s company name, which, under French law, allowed it to prohibit use of the contested mark, within the meaning of Article 53(1)(c) of Regulation No 207/2009 (now Article 60(1)(c) of Regulation 2017/1001), read in conjunction with Article 8(4) of that regulation (now Article 8(4) of Regulation 2017/1001).
7        By decision of 21 December 2011, the Cancellation Division of EUIPO upheld the application for a declaration of invalidity in respect of all the goods and services covered by the contested mark, on the basis of Article 53(1)(c) of Regulation No 207/2009.
8        By decision of 16 October 2013 (Case R 356/2012‑4), the Fourth Board of Appeal of EUIPO annulled the decision of the Cancellation Division and rejected the application for a declaration of invalidity. By judgment of 28 January 2016, Gugler France v OHIM – Gugler (GUGLER) (T‑674/13, not published, EU:T:2016:44), the Court annulled that decision.
9        By decision of 31 January 2017 (Case R 1008/2016‑1), the First Board of Appeal of EUIPO dismissed the appeal by the intervener against the decision of the Cancellation Division and found that the application for a declaration of invalidity of the contested mark should be upheld on the basis of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) of that regulation.
10      By judgment of 25 September 2018, Gugler v EUIPO – Gugler France (GUGLER) (T‑238/17, EU:T:2018:598), the General Court annulled that decision. By judgment of 23 April 2020, Gugler France v Gugler and EUIPO (C‑736/18 P, not published, EU:C:2020:308), the Court of Justice dismissed the appeal brought by the applicant against that judgment.
11      By decision communicated to the parties on 12 May 2020, the Presidium of the Boards of Appeal of EUIPO referred the case to the Fifth Board of Appeal, under the reference R 0893/2020‑5, for a new decision.
12      On 19 August 2020, the Fifth Board of Appeal sent a communication to the parties, asking them to comment, first, on the conclusion that the refusal of the application for a declaration of invalidity was final in that that application was based on Article 52(1)(c) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (subsequently Article 53(1)(c) of Regulation No 207/2009 and now Article 60(1)(c) of Regulation 2017/1001), read in conjunction with Article 8(4) of that regulation (now Article 8(4) of Regulation 2017/1001) and, secondly, on the fact that the second ground on which the applicant relied, namely the ground based on Article 51(1)(b) of Regulation No 40/94 (now Article 59(1)(b) of Regulation 2017/1001), relating to bad faith, was still pending and formed the subject matter of the action.
13      On 19 November 2020, the parties submitted their observations and acknowledged that the scope of the appeal proceedings was limited to the ground set out in Article 51(1)(b) of Regulation No 40/94, namely bad faith.
14      By the contested decision, the Board of Appeal rejected the application for a declaration of invalidity in so far as it was based on Article 51(1)(b) of Regulation No 40/94.
15      The Board of Appeal observed that the Gugler family and Gugler GmbH had been using the Gugler family name and the company name Gugler GmbH in Germany for decades and that they had subsequently begun to expand into the French market by forming close business relations with the applicant and with Gugler Europe. It therefore took the view that the filing of the contested mark obeyed a commercial logic of expansion and of ensuring adequate protection of the family name Gugler, which was the distinctive element of the German company name Gugler GmbH, at European level. The Board of Appeal found that Gugler GmbH, in the context of close business cooperation with the applicant and Gugler Europe, had used the contested mark in accordance with its essential function and that, therefore, the good faith of Gugler GmbH when it filed the application for the contested mark was established. It stated in addition that none of the circumstances put forward by the applicant proved bad faith on the part of Gugler GmbH within the meaning of Article 51(1)(b) of Regulation No 40/94.
Forms of order sought
16      The applicant claims that the Court should:
–        annul the contested decision;
–        cancel the contested mark;
–        order EUIPO or the intervener to pay the costs incurred in the proceedings before EUIPO and before the Court.
17      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
18      Since the application for registration of the contested mark was made on 25 August 2003, the present dispute must be examined in the light of Regulation No 40/94. Indeed, in the case of applications for a declaration that trade marks are invalid, the date on which the application for registration of such marks was made is determinative for the purposes of identifying the applicable substantive law (see 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).
19      As a preliminary point, it should be noted that, at the hearing, the intervener withdrew his arguments to the effect that the action was inadmissible.
20      In support of its action, the applicant puts forward, in essence, a single plea, alleging infringement of Article 51(1)(b) of Regulation No 40/94.
21      Article 51(1)(b) of Regulation No 40/94 provides that an EU trade mark is to be declared invalid, on application to EUIPO or on the basis of a counterclaim in infringement proceedings, where an applicant was acting in bad faith when he filed the application for the trade mark.
22      While, 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, that concept must also be understood in the context of trade mark law, which is that of the course of trade. In that regard, Regulations No 40/94, No 207/2009 and 2017/1001, which were adopted successively, have 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 through 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 judgments of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 74 and the case-law cited, and of 21 April 2021, Hasbro v EUIPO – Kreativni Dogadaji (MONOPOLY), T‑663/19, EU:T:2021:211, paragraph 32 and the case-law cited).
23      Consequently, the absolute ground for invalidity referred to in Article 51(1)(b) of Regulation No 40/94 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 referred to in paragraph 22 above (see judgments of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 75 and the case-law cited, and of 21 April 2021, MONOPOLY, T‑663/19, EU:T:2021:211, paragraph 33 and the case-law cited).
24      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 judgments 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, and of 28 October 2020, Target Ventures Group v EUIPO – Target Partners (TARGET VENTURES), T‑273/19, EU:T:2020:510, paragraph 33 and the case-law cited).
25      In the context of the overall analysis undertaken pursuant to Article 51(1)(b) of Regulation No 40/94, account may in particular be taken of the origin of the contested sign and its use since its creation, the commercial logic underlying the filing of the application for registration of that sign as an EU trade mark, and the chronology of events leading up to that filing (see judgment of 21 April 2021, MONOPOLY, T‑663/19, EU:T:2021:211, paragraph 38 and the case-law cited).
26      In addition, it is for the applicant for a declaration of invalidity who intends to rely on Article 51(1)(b) of Regulation No 40/94 to prove the circumstances which make it possible to conclude that an application for registration of an EU trade mark was filed in bad faith, the good faith of the trade mark applicant being presumed until proven otherwise (see judgment of 21 April 2021, MONOPOLY, T‑663/19, EU:T:2021:211, paragraph 42 and the case-law cited).
27      In the contested decision, as regards the commercial logic underlying the filing of the contested mark, the Board of Appeal noted that the Gugler family had managed a company producing windows and doors since the 1930s and that one of its members had founded Gugler GmbH in 1985, with the object in particular of the production and sale of those products. The Board of Appeal thus found that the family name Gugler and the company name Gugler GmbH had been used for decades in Germany by the Gugler family and by Gugler GmbH. It stated that in 2000 Gugler GmbH had become a supplier of the applicant. The applicant was Gugler GmbH’s distributor in France until October 2009 and used to that end, from 2002, with the consent of Gugler GmbH, the family name Gugler, both in its French company name Gugler France and within the following figurative sign:
28      The Board of Appeal found that, having regard to the chronological factual circumstances and events and the commercial logic applied, the intervener’s statement that Gugler GmbH had decided on 25 August 2003 to file the contested mark in order to secure its rights over the use of the family name Gugler and the German company name Gugler GmbH, acquired through use under German law, and in order to prevent third parties who were not its commercial partners from counterfeiting its trade mark at European level, was reasonable and had to be upheld. It also noted that the intervener had enjoyed protection in Germany and in the European Union since 1985 owing to the existence of the German company name Gugler GmbH.
29      The Board of Appeal found that, having regard to the factual circumstances – and in particular the fact that the applicant had started to use its new company name Gugler France in 2002 and the sign GUGLER PVC once Gugler GmbH had become its shareholder and had consented to such use in France for its products – it was evident, even for the applicant, that Gugler GmbH had the better right over the commercial use of the term ‘gugler’ and was legally entitled to file the contested mark. The Board of Appeal concluded from this that Gugler GmbH was not obliged to inform the applicant of the filing of the contested mark or to ask for its authorisation in that regard and that it had not, by that filing, undermined the applicant’s interests or legitimate expectations.
30      It follows that the Board of Appeal found that the application for registration of the contested mark had an underlying commercial logic of expansion and of ensuring adequate protection for the family name Gugler, which is the distinctive element within the German company name Gugler GmbH.
31      The applicant does not put forward any argument capable of calling that finding into question.
32      As a preliminary point, it must be noted, first, that the applicant does not dispute the chronology of the events which preceded the filing of the application for registration of the sign GUGLER as an EU trade mark, referred to by the Board of Appeal, according to which, in particular, Gugler GmbH had been using the family name Gugler in its company name since 1985.
33      Secondly, the applicant states in the application that from 2000 it was the distributor in France of the goods manufactured by Gugler GmbH. It observes that it used the family name Gugler, in its company name Gugler France and its trade name GUGLER PVC, after Gugler GmbH took a stake in its share capital and Gugler GmbH gave its consent in 2002 to the use of that name. Accordingly, the applicant acknowledges that Gugler GmbH had a right of priority over the use of the name Gugler.
34      In the first place, the applicant raises arguments related to there being unethical behaviour on the part of Gugler GmbH when it filed the contested mark.
35      First, the applicant’s assertion that Gugler GmbH did not have exclusivity over the family name Gugler, which, in its view, is a fairly common name in Germany, is irrelevant. The applicant does not show to what extent that fact is capable of establishing bad faith on the part of Gugler GmbH at the time of filing the application for registration, given that the applicant does not dispute that Gugler GmbH used the Gugler family name in the course of trade for several decades before that filing.
36      Secondly, it is necessary to reject as ineffective the applicant’s argument that the Board of Appeal erred in the contested decision by stating that the Court, in its judgment of 25 September 2018, GUGLER (T‑238/17, EU:T:2018:598), had found that the applicant had not used the company name Gugler France in France. It is true, as acknowledged by EUIPO, that the Board of Appeal’s citation in that regard is incorrect. However, the applicant has not been able to explain the consequences that such an error might have for the lawfulness of the contested decision.
37      Thirdly, the applicant also claims that the unethical behaviour of Gugler GmbH results from the fact that the latter concealed from it and its shareholders the existence of the contested mark. The applicant submits that, contrary to what is stated by the Board of Appeal, it did not claim that Gugler GmbH should have informed it of the existence of the contested mark because of a supposed better right. It argues that if Gugler GmbH had been an honest and fair shareholder, it would have informed the applicant that it had applied for registration of an EU trade mark containing the main element of Gugler France’s company name, that it had had rights over that main element since 25 August 2003, and that those rights were capable of operating against the applicant. It also submits that Gugler GmbH, three days before the filing of the application for registration of the contested mark, paid a contribution equal to 20% of the share capital of Gugler Europe, whose purpose was to own intellectual property rights and to register the French figurative mark GUGLER. The applicant maintains that the owning of rights over the main element of its company name was crucial information that was capable of affecting the existence and management decisions of that company.
38      Since the applicant acknowledges that it used its company name and the trade name GUGLER PVC with the consent of Gugler GmbH, after the latter had become its shareholder and that it has thus accepted the priority of Gugler GmbH over the name Gugler since 2002, it must be held that the applicant had already been informed, as of that date, of the fact that Gugler GmbH owned rights over the main element of its company name.
39      In addition, the applicant does not dispute the fact that after the registration of the contested mark, it continued to use the sign GUGLER in its company name and in its trade name GUGLER PVC for many years. Consequently, the fact that it was not informed of the registration of the contested mark, assuming this to be established, is not therefore capable of demonstrating that Gugler GmbH’s intention at the time of filing was to prevent the applicant from continuing to use that sign or to hinder its commercial activities, which indeed the applicant does not claim.
40      Accordingly, the applicant cannot claim that the fact of informing it or not informing it of the application for registration of the contested mark is capable of altering Gugler GmbH’s intention when it filed that application and of calling into question the fact that commercial logic underlay that filing and that it was not carried out in bad faith.
41      Furthermore, the applicant does not put forward any argument to demonstrate that the fact that Gugler GmbH, in its capacity as shareholder, had consented to the applicant using the name Gugler in its company name and in its trade name GUGLER PVC in France should be interpreted as foregoing the possibility of applying for registration of the sign GUGLER as an EU trade mark.
42      In addition, the applicant does not dispute the assessment of the Board of Appeal that the agreement by which Gugler GmbH had created Gugler Europe with the purpose of managing and administering the intellectual property rights over the Gugler name cannot be interpreted as Gugler GmbH foregoing the possibility of filing the contested mark in its own name.
43      In the second place, the applicant submits that there was dishonest intention on the part of Gugler GmbH when it filed the contested mark, on the ground that Gugler GmbH filed the application for registration three days before Gugler Europe filed the application for registration for the French figurative mark GUGLER. It argues that if Gugler GmbH’s intention had been fair and honest, it would have filed an application for registration with the national intellectual property offices, apart from the French office. The applicant submits that the contested mark was filed in order to obtain a trade-mark registration which confers rights over the main element of its trade name and in order to be in a ‘leading position’.
44      It is sufficient to observe that, inasmuch as it is not disputed that Gugler GmbH had a priority right over the name Gugler, which it had used for many years in the course of its commercial activities, it was legitimate for it to protect its rights over the sign GUGLER and to file the application for registration of the contested mark before agreeing to Gugler Europe filing an application for registration of an identical French mark. Extending the protection of a sign by having it registered as an EU trade mark is part of the normal business strategy of an undertaking.
45      In that regard, the applicant’s argument that the commercial logic underlying the filing of the application for registration is undermined by the fact that the name Gugler was not used as a mark before the date of filing is irrelevant. It must be observed, as EUIPO notes, that there is no obligation to use a mark before filing it.
46      In addition, it must be borne in mind that the fact, as the applicant states, that the filing of the contested mark sought to obtain a trade-mark registration conferring rights over the element ‘gugler’ constitutes an objective that is consistent with the function of a trade mark and cannot demonstrate Gugler GmbH’s bad faith.
47      Lastly, it should be noted that it is not apparent from the articles of association of Gugler Europe, or from Gugler GmbH’s taking of a stake in its share capital, that Gugler GmbH had waived the possibility of filing an application for registration of the contested mark, or of having protection of the name Gugler in France, or, as EUIPO notes, waived its right of priority with regard to the registration of the French trade mark GUGLER by Gugler Europe. The Court must, therefore, reject the applicant’s argument that honest conduct on the part of Gugler GmbH would have consisted in filing trade mark applications at national level, in all the Member States other than France, since that argument means that Gugler GmbH would have had to waive its right of priority over the sign GUGLER in France.
48      It follows from the foregoing that the applicant does not put forward any argument capable of establishing that the application for registration of the contested mark did not have any underlying commercial logic for Gugler GmbH or that that application had been made with the intention of obtaining an exclusive right for purposes other than falling within the functions of a trade mark.
49      In the third place, the applicant raises arguments seeking to challenge the Board of Appeal’s conclusion that Gugler GmbH intended to use the contested mark on the date of filing the application for registration.
50      In that regard, it should be noted that, in the contested decision, the Board of Appeal rejected the applicant’s argument that Gugler GmbH did not have any intention to use the contested mark. The Board of Appeal pointed out that the applicant had used its company name Gugler France and the sign GUGLER PVC in France since 2002, with the consent of Gugler GmbH, for the goods and services at issue, before and after the date on which the contested mark was filed.
51      It added that neither the use of the company name Gugler France nor that of the sign GUGLER PVC altered the distinctive character of the contested mark, given that the clearly distinctive element was the family name Gugler. It therefore held that the use of the company name Gugler France and the sign GUGLER PVC had to be regarded as use of the contested mark in accordance with Article 15(2)(a) of Regulation No 40/94.
52      The Board of Appeal stated that, in addition, it was apparent from the cooperation agreement entered into by Gugler Europe and Gugler GmbH on 11 November 2004 that the latter marketed its products under its trade mark GUGLER in Germany and other countries, and that, in France, that marketing was carried out through French undertakings bound by licensing agreements concluded between Gugler GmbH and Gugler Europe. It noted that, since 2004, Gugler Europe had granted 17 licences to French companies to use the French trade mark GUGLER, No 3243097, identical to the contested mark and covering the same or similar goods. The Board of Appeal thus inferred that the contested mark had been used both by the applicant and Gugler Europe in a close business relationship and with the consent of Gugler GmbH before and long after its filing date, which was considered to be use by the proprietor in accordance with Article 15(3) of Regulation No 40/94.
53      It should be borne in mind that, before the date on which the application for registration was filed, first, the name Gugler and the company name Gugler GmbH had been used for decades in Germany by the Gugler family and by Gugler GmbH for the marketing of the goods and services at issue and that, secondly, the applicant had used that name in its company name Gugler France and its trade name GUGLER PVC since 2002 with the consent of Gugler GmbH, in connection with the distribution of the latter’s products in France.
54      These elements, which are not disputed by the applicant, establish that, on the date of filing the application for registration of the contested mark, Gugler GmbH was using the name Gugler in the course of its business activities for the goods and services in respect of which registration was sought.
55      Consequently, these objective elements were sufficient to enable the Board of Appeal to conclude that, on that same date, Gugler GmbH intended to use the contested mark for the goods and services at issue.
56      The applicant’s arguments are not capable of challenging that conclusion reached by the Board of Appeal.
57      In that regard, it must be noted that the applicant has the burden of proving bad faith and that it does not claim that Gugler GmbH intended, at the time of filing, to hinder its business activity in relation to the distribution of its products in France or to prevent it from using the contested mark.
58      The applicant disputes the Board of Appeal’s assertion that the use of its company name Gugler France and of its trade name GUGLER PVC should be regarded as use of the contested mark. It maintains, inter alia, that, from 15 September 2003, it used the French trade mark GUGLER under a licence granted by Gugler Europe and that the use of a sign as a company name should not be considered to be use of a mark.
59      In addition, the applicant complains that the Board of Appeal relied on the cooperation agreement concluded between Gugler Europe and Gugler GmbH on 11 November 2004 to prove use of the contested mark, on the ground that that agreement was subsequent to the relevant date, namely the date on which the application for registration was filed. The applicant disputes the Board of Appeal’s statement that the expression ‘under its trade mark’, mentioned in that agreement, referred to the contested mark. It submits that that expression refers to the EU figurative mark G, No 4427555, of which Gugler GmbH was the proprietor.
60      The applicant also submits that the 17 licences granted by Gugler Europe to French companies made reference to the French figurative mark GUGLER and did not concern the contested mark which, consequently, was not used. It states that between 2003 and 2009 it used the French trade mark GUGLER with the consent of Gugler GmbH and that the Board of Appeal erred in finding that the contested mark had been used by it and Gugler Europe with the consent of Gugler GmbH. It submits that the intervener became the proprietor of the contested mark on 1 October 2008 and that he accorded a licence on 22 October 2009, which allegedly proves that the contested mark had not been used between those two dates.
61      It should be observed that, by those arguments, the applicant only disputes the Board of Appeal’s assessments relating to the use of the contested mark after the application for registration.
62      However, those assessments were made for the sake of completeness by the Board of Appeal in order to respond to the applicant’s arguments that Gugler GmbH did not intend to use the contested mark and had not used it after the date of filing. The Board of Appeal thus found that that factual evidence, subsequent to the date on which the application for registration was filed, corroborated the good faith and the intention to make lawful use of the contested mark at the time of its filing.
63      Consequently, the applicant’s arguments cannot call into question the Board of Appeal’s conclusion that since the application for registration of the contested mark had an underlying commercial logic, Gugler GmbH had the intention of using the contested mark on the date of filing. Those arguments must, therefore, be rejected as ineffective.
64      In any event, the applicant’s arguments related to the use of the contested mark by Gugler GmbH after the application for registration must be rejected.
65      The applicant cannot maintain that the expression ‘under its trade mark’, used in the cooperation agreement concluded between Gugler Europe and Gugler GmbH on 11 November 2004, referred to another EU figurative mark, G, owned by Gugler GmbH. In that regard, it is sufficient to note that that agreement expressly mentions the trade mark GUGLER and that the application for the EU figurative mark G, No 4427555, was filed on 6 May 2005, that is to say, after that agreement, which the applicant acknowledged at the hearing.
66      In so far as it is apparent from that agreement that Gugler GmbH manufactured carpentry products which it marketed under the contested mark throughout Germany and in other countries, the Board of Appeal was entitled to find that Gugler GmbH had continued to use the contested mark after filing the application for registration and thus to confirm that Gugler GmbH had filed that mark with the intention of using it. The applicant’s argument that that agreement was an exclusive supply contract which did not relate to the use of the contested mark is irrelevant in that respect.
67      In the fourth place, the applicant submits that Gugler GmbH’s dishonest intention at the time of filing the application for registration of the contested mark became apparent in 2009 and 2010 when Gugler GmbH brought infringement actions against it before the French courts.
68      In that regard, the Board of Appeal rejected the applicant’s argument that the infringement actions brought by Gugler GmbH and the intervener, against the applicant and Gugler Europe, revealed their dishonest intentions on the date of filing the contested mark. The Board of Appeal noted that those infringement actions had been brought more than seven years after the date of filing the contested mark. It pointed out that, for many years after the filing and registration of the contested mark, Gugler GmbH and the intervener had marketed their products in France with the collaboration of the applicant and Gugler Europe, those latter companies being authorised to use the contested mark. The Board of Appeal found that once the commercial relationship between Gugler GmbH and the intervener, on the one hand, and the applicant and Gugler Europe, on the other hand, had come to an end, the infringement actions constituted a legitimate use of the exclusive rights conferred by an EU trade mark. It thus found that those factual circumstances did not corroborate the assumption that Gugler GmbH’s intention, when filing the contested mark, was solely to use the rights arising from the contested mark to prevent the invalidity applicant or any third party from using it.
69      The applicant criticises the Board of Appeal on the ground that it did not take account of the fact that Gugler GmbH had sought damages for counterfeiting for the period running from 2003 to 2009. It disputes the existence of counterfeiting on the ground that Gugler GmbH consented to it using, first, the name Gugler in its company name and in its trade name GUGLER PVC and, secondly, the French figurative mark GUGLER. It submits that claiming damages for a period in which no counterfeiting took place is demonstrative of the bad faith of Gugler GmbH and the intervener and of the bad use that they have made of the contested mark, which consists in taking advantage of the rights conferred by that mark in order to obtain financial advantages.
70      In that regard, first, it is sufficient to note that the applicant does not put forward any argument to challenge the Board of Appeal’s assertion that the infringement actions constituted a legitimate use of the exclusive rights conferred by the contested mark. The bringing of infringement proceedings by the proprietor of a trade mark cannot constitute an act of bad faith or, as the applicant maintains, ‘bad use’ of the contested mark. In that regard, it is not for the Court to rule on the merits of those actions, and the applicant’s assertion that those infringement actions are unfounded is irrelevant.
71      Secondly, the applicant cannot validly maintain that infringement actions brought in 2009 and 2010 following the breakdown of its business relations with Gugler GmbH and the intervener – that is to say, more than six years after the date on which the application for registration of the contested mark was filed – even if they were to include claims for damages for the period from 2003 to 2009, would be capable of establishing Gugler GmbH’s bad faith at the time the application was filed.
72      Furthermore, in so far as the applicant might submit that those actions for infringement show that the application for registration of the contested mark had been filed with the intention of obtaining an exclusive right for purposes other than those falling within the functions of a trade mark, namely the intention to obtain damages, that argument must also be rejected. Such an argument implies that the trade mark application was filed by Gugler GmbH solely for the purpose of bringing infringement proceedings once the commercial relationship between it and the applicant had ended, which, as the intervener argues, does not correspond to economic reality. That argument is, in any event, contradicted by the facts, which are not disputed by the applicant, from which it is apparent that, over a period of several years after the date on which the contested mark was filed, the applicant had commercial relations with Gugler GmbH, that it marketed Gugler GmbH’s products in France, and that it was authorised by that latter company to use the French figurative mark GUGLER.
73      It follows from all the foregoing that the single plea in law must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
74      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Gugler France to pay the costs.
De Baere
Kreuschitz
Steinfatt
Delivered in open court in Luxembourg on 13 July 2022.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.