JUDGMENT OF THE GENERAL COURT (Third Chamber)
28 October 2020 (*)
(EU trade mark – Invalidity proceedings – EU word mark TARGET VENTURES – Absolute ground for invalidity – Bad faith – Article 52(1)(b) of Regulation (EC) No 207/2009 (now Article 59(1)(b) of Regulation (EU) 2017/1001))
In Case T‑273/19,
Target Ventures Group Ltd, established in Road Town (British Virgin Islands), represented by T. Dolde and P. Homann, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by P. Sipos and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Target Partners GmbH, established in Munich (Germany), represented by A. Klett and C. Mikyska, lawyers,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 4 February 2019 (Case R 1684/2017-2), relating to invalidity proceedings between Target Ventures Group and Target Partners,
THE GENERAL COURT (Third Chamber),
composed of A.M. Collins, President, V. Kreuschitz and G. Steinfatt (Rapporteur), Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the application lodged at the Court Registry on 24 April 2019,
having regard to the response of EUIPO lodged at the Court Registry on 19 July 2019,
having regard to the response of the intervener lodged at the Court Registry on 17 July 2019,
having regard to the measure of organisation of procedure of 3 December 2019 and the reply of the applicant lodged at the Court Registry on 10 December 2019,
further to the hearing on 26 June 2020,
gives the following
Judgment
Background to the dispute
1        The intervener, Target Partners GmbH, established in Munich (Germany), is a venture capital fund. It has been the proprietor, since 2002, of, in particular, the domain name ‘targetventures.com’ and, since 2009, of the domain name ‘targetventures.de’. However, the content of the websites registered under those domain names has only ever referred to TARGET PARTNERS, which is the sign under which the intervener offers its services. Those sites are merely a means of redirection to the intervener’s official site, ‘www.targetpartners.de’; indeed, they display the content of that site.
2        The applicant, Target Ventures Group Ltd, established in Road Town (British Virgin Islands), also claims to be a venture capital fund. It claims that it has been operating under the sign TARGET VENTURES on the Russian venture capital market since 2012 and on the European Union market since, at least, 8 March 2013. It submits that, between 23 December 2013 and 18 December 2014, it provided financial and monetary services under that sign to five undertakings established in the European Union. It argues that, in return for its financial contribution, it acquired holdings in those undertakings on behalf of its own investors. It submits that those investments are attested to by a number of specialist websites and also by the websites of those undertakings.
3        On 13 and 14 November 2014, two partners of the applicant or of a third party operating under the name of TARGET VENTURES, as well as a representative of the intervener, attended a well-known conference in the investment sector in London (United Kingdom). On 13 November 2014, a representative of a start-up undertaking looking for investors sent two emails to those three people jointly, addressing them by their forenames. Their email addresses, which ended respectively in @targetpartners.de and @targetventures.ru, were visible in those emails.
4        On 27 January 2015, the intervener 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)). Registration as a mark was sought for the word sign TARGET VENTURES (‘the contested mark’).
5        The services in respect of which registration was sought are in Classes 35 and 36 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 35: ‘Advertising, business management, business administration, business consultancy, office functions’;
–        Class 36: ‘Financial affairs, monetary affairs; except payment systems and electronic communication systems in connection with payments and money order services’.
6        The trade mark application was published in Community Trade Marks Bulletin
No 33/2015 of 18 February 2015. The contested mark was registered on 28 May 2015 under the number 13685565.
7        Having received an email dated 7 July 2015 sent by a client who had supposedly confused it with the applicant, which was organising a promotional event in Berlin (Germany) on 16 July 2016, the intervener sent the applicant a cease and desist letter, followed by an application for an interim injunction at the Landgericht Berlin (Regional Court, Berlin, Germany), which it withdrew after reservations were expressed by the president of the formation of the Landgericht which had jurisdiction.
8        On 13 July 2015, the applicant filed an application for a declaration of invalidity, under Article 52(l)(b) of Regulation No 207/2009 (now Article 59(l)(b) of Regulation 2017/1001), against the contested mark in respect of all the services referred to in paragraph 5 above.
9        On 25 May 2017, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.
10      On 28 July 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Cancellation Division.
11      By decision of 4 February 2019 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal brought by the applicant, concluding that the applicant had not proved that the intervener was acting in bad faith when it filed the application for registration of the contested mark.
12      In order to reach that conclusion, in the first place, the Board of Appeal found that, since an application for a declaration of invalidity based on the absolute ground for invalidity contained in Article 59(1)(b) of Regulation 2017/1001 could be filed by any natural or legal person, the applicant did not need to prove a legal interest in bringing proceedings, with the result that it was irrelevant that the documents submitted by the applicant did not make it possible to establish who had actually operated under the sign TARGET VENTURES.
13      In the second place, the Board of Appeal upheld the Cancellation Division’s findings that the applicant had not proved that the intervener knew of the services offered in the European Union by it or by a third party operating under the sign TARGET VENTURES. It found that the applicant had also not shown the intervener’s presumed knowledge of its activities. It stated that the use of the sign TARGET VENTURES in Europe by the applicant or a third party was not so extensive that it could safely be assumed that that sign had become well known or recognised among the relevant public and competitors at the time when the contested mark was applied for. It took the view that, due to the relatively short duration of use of the sign TARGET VENTURES in Europe before 27 January 2015, the applicant would have needed to have proved a high intensity of use or at least broad press coverage of its activities. However, according to the Board of Appeal, there was no such evidence, with the result that it could not be presumed that the intervener had, or at least ought to have had, knowledge of the business activities carried out using the sign TARGET VENTURES by the applicant or a third company. Consequently, the Board of Appeal found that one of the necessary requirements of Article 52(1)(b) of Regulation No 207/2009 had not been fulfilled, with the result that the application for a declaration of invalidity had to be rejected.
14      In the third place, the Board of Appeal took the view that, even if the applicant had proved that the intervener knew or ought to have known that it or a third party had used the sign TARGET VENTURES before the date on which the contested mark was filed, it had not proved that the intervener never had the intention of using that mark, but solely intended to prevent the applicant from entering the European market. It stated that, on the contrary, the evidence submitted by the intervener showed that it had a legitimate business interest in having the contested mark registered.
15      It took the view that the question as to whether the use which the intervener had made of the domain names referred to in paragraph 1 above created earlier rights in the sign TARGET VENTURES was irrelevant, because it was sufficient that there was a legitimate business reason for the registration of the contested mark. In that context, the Board of Appeal noted that it was apparent from the evidence submitted by the intervener that it had made ‘some use of the sign [at issue] before its application [for registration of] the contested mark’.
16      Consequently, according to the Board of Appeal, it could not be excluded that the intervener had filed the contested mark either because it wanted to expand its use of the sign TARGET VENTURES or because it wanted to ‘protect its clients from possible confusion’, like that illustrated by the email of 7 July 2015 (see paragraph 7 above). It stated that, although that email had been sent after the filing date of the contested mark, it proved that at least one client had made a connection between the sign TARGET VENTURES and the intervener. It took the view that, in the present case, the commercial logic behind the filing of the contested mark was the intervener’s legitimate desire to protect its distinctive name TARGET accompanied by the description of its venture capital services VENTURES, in addition to its mark TARGET PARTNERS, in order to prevent any confusion on the part of its clients.
Forms of order sought
17      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs, including those incurred for the purposes of the proceedings before the Cancellation Division and the Second Board of Appeal of EUIPO.
18      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
19      The intervener contends that the Court should:
–        dismiss the action and uphold the contested decision;
–        order the applicant to pay the costs.
Law
20      In support of its action, the applicant relies on two pleas in law, alleging infringement of Article 52(1)(b) of Regulation No 207/2009 and of Article 75 of that regulation (now Article 94 of Regulation 2017/1001) respectively.
21      In support of its first plea, first, the applicant submits, in essence, that the Board of Appeal made errors in the assessment of whether the intervener had prior knowledge of the applicant’s use of the sign TARGET VENTURES in connection with its venture capital services. According to the applicant, the intervener must, at least, have known about the applicant’s use of the sign TARGET VENTURES outside and inside the territory of the European Union, first of all, on account of having received two emails on the occasion of the specialist conference relating to investment (see paragraph 3 above) and, second, because, as at the date on which the contested mark was filed, the applicant had already used that sign intensively for venture capital services outside the European Union and had, more than one year prior to that, also started using it inside the European Union. The applicant, operating under the sign TARGET VENTURES, claims that it was therefore already known as a major player in the venture capital sector.
22      Second, the applicant submits that the intervener has never used or intended to use that sign in order to designate the commercial origin of its services. It argues that the intervener’s intention at the time when the application for registration of the contested mark was filed was more to use it for other purposes, in particular to strengthen or protect its mark TARGET PARTNERS, or to prevent third parties in general and/or the applicant in particular from using the sign TARGET VENTURES on the ground that those signs might give rise to confusion. It submits that the fact that the intervener has owned a domain name ‘targetventures.com’ since 2002 cannot substantiate the claim of a legitimate interest in filing the contested mark 13 years later, in particular in light of the fact that that domain name has never been used, but at most provided a means of redirection to the website ‘www.targetpartners.de’. It claims that such a redirection could hardly be categorised as ‘some use’. The applicant argues that the Board of Appeal did not, in addition, correctly assess the chronology of events. It submits that, consequently, the Board of Appeal, in the context of its overall assessment of the circumstances of the case, erred in finding that the intervener had not acted in bad faith when it filed the application for the contested mark.
23      EUIPO and the intervener take the view, in essence, that the applicant has not proved that the intervener knew or ought to have known, at the time when the application for registration of the contested mark was filed, that the applicant was using the sign TARGET VENTURES on the European Union market in connection with the services concerned. They submit that, in any event, the intervener’s use of that sign, whether before or after its registration as an EU trade mark, shows that the reason for that registration was a legitimate business interest.
24      It must be pointed out at the outset that, even though the Board of Appeal, in the contested decision, applied the provisions of Regulation 2017/1001, ratione temporis and in view of the date on which the application for registration of the contested mark was filed, which is decisive for the purposes of identifying the substantive law applicable as far as applications for a declaration of invalidity are concerned (judgments of 29 November 2018, Alcohol Countermeasure Systems (International) v EUIPO, C‑340/17 P, not published, EU:C:2018:965, paragraph 2, and 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), the present case is governed by the substantive provisions of Regulation No 207/2009 and that, in those circumstances, the references to Regulation 2017/1001 must be understood, as regards the substantive rules, as referring to the identical provisions of Regulation No 207/2009, which does not, however, affect the legality of the contested decision. Article 52(1)(b) of Regulation No 207/2009 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 the applicant was acting in bad faith when he filed the application for the trade mark.
25      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, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), Regulation No 207/2009 and Regulation 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 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; see also, to that effect, judgment of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 74).
26      Consequently, the absolute ground for invalidity referred to in Article 52(1)(b) of Regulation No 207/2009 applies where it is apparent from relevant and consistent indicia that the proprietor of an EU trade mark has filed the application for registration of that mark not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin referred to in the previous paragraph (judgments of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 46, and of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 75).
27      In the first place, in stating in paragraph 19 of the contested decision that bad faith involves conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices and presupposes a dishonest intention or other sinister motive, the Board of Appeal interpreted the concept of bad faith too restrictively. It is apparent from the case-law cited in paragraphs 25 and 26 above that 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, may be sufficient for it to be held that the trade mark applicant was acting in bad faith.
28      Accordingly, if it is not necessary, for the purposes of categorisation as bad faith, for the proprietor of the contested mark, at the time when the trade mark application was filed, to have been targeting a specific third party, then it is also not necessary for him or her to have had knowledge of a third party’s use of the sign at issue. Indeed, if the proprietor of the contested mark had that knowledge, his or her application would necessarily be targeting that third party.
29      Consequently, by finding in essence, in paragraphs 31 and 32 of the contested decision, that the lack of proof of actual or presumed knowledge of prior use of the sign at issue was sufficient to reject the application for a declaration of invalidity in question, the Board of Appeal erred in law in interpreting Article 52(1)(b) of Regulation 207/2009.
30      In the second place, as the Court of Justice held at the end of its analysis in paragraphs 48 to 55 of the judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO (C‑104/18 P, EU:C:2019:724), it is to be inferred from the interpretation provided by the Court of Justice in the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361), and in particular in paragraph 53 thereof, merely that, where it is established that use by a third party of an identical or similar sign for identical or similar goods or services existed and was capable of causing confusion, that is to say, in a situation which is different from that in the present case, it is necessary to examine, in the context of the overall assessment of the relevant circumstances of the particular case, whether the applicant for the contested mark had knowledge of this. However, prior use of the sign at issue by a third party is not a condition laid down by Article 52(1)(b) of Regulation No 207/2009 (see, to that effect, judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraphs 51, 52, 69 and 70). Consequently, knowledge on the part of the proprietor of the contested mark of a third party’s prior use of that sign or the question of whether that proprietor ought to have had knowledge of such prior use of the sign at issue by a third party is only one relevant factor among others to be taken into consideration.
31      Likewise, the Court has had occasion to point out that, since the various factors identified by the case-law are only examples drawn from a number of factors which can be taken into account in order to determine whether an applicant for registration was acting in bad faith at the time of filing the trade mark application (judgment of 14 February 2019, Mouldpro v EUIPO – Wenz Kunststoff (MOULDPRO), T‑796/17, not published, EU:T:2019:88, paragraph 83), the fact that any one of those factors is not present does not necessarily preclude, depending on the particular circumstances of the case, a finding that the applicant acted in bad faith (see judgment of 23 May 2019, Holzer y Cia v EUIPO – Annco (ANN TAYLOR and AT ANN TAYLOR), T‑3/18 and T‑4/18, EU:T:2019:357, paragraph 52 and the case-law cited).
32      It follows that, in paragraph 20 of the contested decision, the Board of Appeal erred in stating that, in order to assess whether there was bad faith, the criteria listed in paragraph 53 of the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361) ‘[had to] be taken into consideration’, since it did not thereby sufficiently take into account all the circumstances of the present case.
33      In the third place, the intention of an applicant for a trade mark is a subjective factor which must, however, be determined objectively by the competent administrative and judicial authorities. Consequently, any claim of bad faith must be the subject of an overall assessment, taking into account all the factual circumstances relevant to the particular case. It is only in that manner that a claim of bad faith can be assessed objectively (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 47 and the case-law cited).
34      In paragraphs 48 to 55 of the judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO (C‑104/18 P, EU:C:2019:724), the Court of Justice also stated that the factors which it had identified in the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361), for the purposes of determining whether there was bad faith, were closely linked to the circumstances of the case and that there could be other situations where the application for registration of a trade mark was liable to be regarded as having been filed in bad faith (see, also, to that effect, judgment of 23 May 2019, ANN TAYLOR and AT ANN TAYLOR, T‑3/18 and T‑4/18, EU:T:2019:357, paragraph 52 and the case-law cited).
35      As regards in particular the question of whether the intervener sought registration of the contested mark without having any intention of using it for purposes falling within the functions of a trade mark, in particular the essential function of indicating origin (see paragraphs 25 and 26 above), it is apparent from paragraphs 76 and 77 of the judgment of 29 January 2020, Sky and Others (C‑371/18, EU:C:2020:45), that, although the applicant for a trade mark 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 although he or she has a period of five years for beginning actual use consistent with the essential function of that trade mark, the registration of a trade mark by an applicant without any intention of using it in connection with the goods and services covered by that registration may constitute bad faith, where there is no rationale for the application for registration in the light of the aims referred to in Regulation No 207/2009. Such bad faith may, however, be established only if there are objective, relevant and consistent indicia tending to show that, when the application for registration of the 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.
36      In the present case, it is apparent from objective, relevant and consistent indicia that the intervener’s intention at the time when the application for registration of the contested mark was filed was not to put it to a use falling within the functions of a trade mark.
37      First, it is stated in paragraph 37 of the contested decision that it cannot be excluded that the intervener wanted to protect its clients from possible confusion between the signs TARGET PARTNERS and TARGET VENTURES and that the commercial logic behind the filing of the contested mark was the intervener’s legitimate desire to protect its distinctive name (TARGET) accompanied by the description of its venture capital services (VENTURES), in addition to its mark TARGET PARTNERS, and thus prevent any confusion among its clients.
38      However, in the specific circumstances of the present case, the fact that the intervener registered a mark in order to prevent a likelihood of confusion with another mark of which it was already the proprietor and/or in order to protect, in that connection, the element that is common to those marks is, as the applicant in essence submits, extraneous to the functions of a trade mark, in particular the essential function of indicating origin, and contributed more towards strengthening and protecting the intervener’s first mark, which was, both before and after the application for registration of the contested mark was filed, the only sign under which the intervener offered its services.
39      Second, it is clear from the intervener’s answers to the questions put to it at the hearing that the intention which gave rise to the filing of the application for registration of the contested mark was that of strengthening another mark, namely TARGET PARTNERS, since the websites ‘www.targetventures.de’ and ‘www.targetventures.com’ did nothing other than provide a means of redirection to the intervener’s main website.
40      Indeed, the intervener stated that the contested mark had been used, as it had been before it was registered, in connection with the websites in order to redirect interested consumers to its main website, entitled ‘www.targetpartners.de’, on which it offers its services. It also stated that that was the main reason for its use. According to the intervener, by using a distinctive element, namely the element ‘target’, in the domain names ‘targetventures.com’ and ‘targetventures.de’ with an element that is descriptive of venture capital services, namely the element ‘ventures’, and by providing a means of redirection to its main website, on which it offers its services under the mark TARGET PARTNERS, it intended to show the interested public that those services were also offered by Target Partners. It submitted that the reason for the registration of the contested mark was therefore that of protecting the sign TARGET used in the name of those two websites. The intervener also declared that it wished to broaden its portfolio of trade marks.
41      Given, first, that it is not disputed that the use of the sign TARGET VENTURES has been the same before and after the filing of the application for registration in respect of that sign, namely that of providing a means of redirection to the intervener’s main website ‘www.targetpartners.de’, and given, second, that it may be deduced from the intervener’s explanation at the hearing that the protection of that use was the principal reason for the application for registration of the contested mark, no information of any other planned specific use having been provided, it must be held that the intervener solely had the intention of continuing to use that mark in the same way as it had been doing before that application was filed. Consequently, the intervener filed that application not with the aim of engaging fairly in competition but with the intention of obtaining, potentially without 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.
42      Third, as regards the general claim, in paragraph 37 of the contested decision, that it cannot be ruled out that the intervener filed the contested mark because it wanted to expand the use of the sign TARGET VENTURES, it must be pointed out that that claim is contradicted not only by the lack of any use of that sign other than that which had already taken place before the application for registration was filed, but also by the intervener’s statements at the hearing regarding the main reason for the use of that sign both before and after the filing of that application, and its intention at that time, and by the fact that the intervener has ensured that it is identified in the minds of clients exclusively with the mark TARGET PARTNERS.
43      It is clear from the intervener’s reply to the email of 7 July 2015 (see paragraph 7 above) that it wished to state clearly to the client in question that it was not it that was organising the promotional event, without, however, mentioning that it was also using the name TARGET VENTURES. It is also not disputed that the intervener has never offered its services by using the sign TARGET VENTURES in order to do so. On the contrary, the origin of the services offered by the intervener has always been identified by the mark TARGET PARTNERS. Consequently, the intervener, even subsequent to the filing of the application for registration, used that name to the exclusion of any other for the purposes of identifying itself to its clients.
44      Accordingly and in the absence of any indicia in that regard, the Board of Appeal erred in envisaging that the intention of expanding the use of the sign TARGET VENTURES could have been the reason for the filing of the application for registration of that sign.
45      Consequently, the grounds underlying the finding in paragraph 38 of the contested decision are vitiated by errors of law and of fact.
46      In the fourth place, as has been held in paragraphs 27 to 29 above, if the intention of the proprietor of the contested mark at the time of filing his or her application for registration is that 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, an examination of whether that proprietor had prior knowledge of a third party’s use of the sign at issue is not a conditio sine qua non in order for it to be possible to hold that that proprietor was acting in bad faith. Accordingly, an examination of the chronology of events, which is part precisely of the analysis of the issue of whether the proprietor of the mark knew or ought to have known of the use of that mark by a third party, is also not necessary. However, since the Board of Appeal took the view, in the present case, that proof of the intervener’s actual or presumed knowledge of the applicant’s use of the sign TARGET VENTURES was necessary, it should have taken into account all the factors relevant to the circumstances of the case including, first, the use of that sign by the applicant outside of the European Union and, second, the chronology of events.
47      First, it follows from the judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO (C‑104/18 P, EU:C:2019:724, paragraphs 51, 52 and 55), that the examination of whether the proprietor of the contested mark had prior knowledge of a third party’s use of that sign must not be confined to the European Union market. In particular, the Court of Justice stated in paragraph 52 of that judgment that there could be situations, which were unrelated to the situation which led to the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361), where the application for registration of a trade mark was liable to be regarded as having been filed in bad faith notwithstanding the fact that, at the time of that application, there was no use by a third party on the internal market of an identical or similar sign for identical or similar goods. In upholding the Cancellation Division’s analysis and restricting its own examination to whether the intervener had knowledge of the use by the applicant or a third party of the sign TARGET VENTURES in the context of its business activities within the European Union, the Board of Appeal applied that factor, in paragraphs 23, 26, 30 and 31 of the contested decision, in an incomplete manner.
48      Second, it has to be stated that, in the context of its analysis, the Board of Appeal did not in any way take into account the chronology of events that were relevant to the present case.
49      It follows from all of the foregoing that the first plea must be upheld and that the contested decision must be annulled without it being necessary to examine the second plea.
Costs
50      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. In the present case, EUIPO and the intervener have been unsuccessful. As the applicant has claimed only that EUIPO alone should be ordered to pay the costs of the present proceedings, EUIPO must be ordered to bear its own costs and to pay those incurred by the applicant in the proceedings before the Court.
51      Furthermore, the applicant has claimed that EUIPO should be ordered to pay the costs that it incurred in the administrative proceedings before the Cancellation Division and before the Board of Appeal of EUIPO. In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Cancellation Division. Accordingly, the applicant’s request that EUIPO should be ordered to pay the costs of the administrative proceedings can be allowed only as regards the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal.
52      In accordance with Article 138(3) of the Rules of Procedure, the intervener must bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 February 2019 (Case R 1684/2017-2);
2.      Orders EUIPO to bear its own costs and to pay those incurred by Target Ventures Group Ltd, including those which the latter party incurred before the Board of Appeal;
3.      Orders Target Partners GmbH to bear its own costs.
Collins
Kreuschitz
Steinfatt
Delivered in open court in Luxembourg on 28 October 2020.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.