JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
29 September 2021 (*)
(EU trade mark – Invalidity proceedings – EU word mark AGATE – Absolute ground for refusal – 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‑592/20,
Univers Agro EOOD,
established in Sofia (Bulgaria), represented by C. Hernández-Martí Pérez, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas 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
Shandong Hengfeng Rubber & Plastic Co. Ltd, established in Dongying (China), represented by J. Erdozain López, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 27 July 2020 (Case R 725/2019-4), relating to invalidity proceedings between Shandong Hengfeng Rubber & Plastic and Univers Agro,
THE GENERAL COURT (Ninth Chamber),
composed of M. J. Costeira, President, D. Gratsias (Rapporteur) and M. Kancheva,
Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 28 September 2020,
having regard to the response of EUIPO lodged at the Court Registry on 10 December 2020,
having regard to the response of the intervener lodged at the Court Registry on 23 December 2020,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification, on 18 January 2021, of the close of the written part of the procedure,
having regard to the appointment of another judge to complete the Chamber following the death of Judge Berke on 1 August 2021,
having decided, pursuant to Article 106(3) of the Rules of Procedure of the General Court, to rule on the action without an oral part of the procedure,
gives the following
Judgment
Background to the dispute
1        On 7 March 2017, the applicant, Univers Agro Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended
(replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the word sign AGATE.
3        The goods in respect of which registration was sought are in Class 12 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 to the following description: ‘automobile tires [tyres]’.
4        The mark at issue was registered on 21 June 2017 in respect of the goods referred to in paragraph 3 of this judgment.
5        On 28 September 2017, the intervener, Shandong Hengfeng Rubber & Plastic Co. Ltd, the proprietor of a Chinese figurative mark including the word element ‘Agate’ (‘the Chinese mark Agate’), represented below and registered in 2009 for goods in Class 12 and designating a set of tyres, filed with EUIPO an application for a declaration of invalidity of that mark.
6        The request in question was based on Article 59(1)(b) of Regulation 2017/1001.
7        In addition, the intervener relied, in support of its application, on Article 60(1)(c) of that regulation, read in conjunction with Article 8(4) thereof, on the basis of the Chinese mark Agate used in the course of trade in Bulgaria for tyres
in Class 12.
8        On 21 February 2019, the Cancellation Division granted the intervener’s application on the basis of Article 59(1)(b) of Regulation 2017/1001 and, without examining the second ground for invalidity relied on, declared the contested mark invalid. The Cancellation Division found that the intervener had succeeded in demonstrating that the contested mark had been filed in bad faith, within the meaning of the abovementioned provisions, since it was apparent from the file that that mark had been filed with the aim of taking advantage of the lack of formal protection of the intervener’s mark in Bulgaria, by coupling its clients and the market share created by the intervener’s commercial partner and distributor, Omnifak Ltd.
9        On 1 April 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.
10      By decision of 27 July 2020 (‘the contested decision’), the Fourth Board of Appeal dismissed the applicant’s action and upheld the decision of the Cancellation Division. In particular, it noted, first, that the contested mark and the sign used by the intervener were identical, despite the figurative nature of that sign and, second, that the goods covered by those signs were at least highly similar.
The Fourth Board of Appeal went on to find that, in the light of the evidence in the file and the chronology of events as it appeared from those events, it was practically impossible, first, that the applicant had no knowledge that the intervener was using the Chinese mark Agate through its distributor Omnifak in Bulgaria and, second, that it intended to ‘honestly use the [contested] mark in the course of trade,
and not to block the Bulgarian market
for the [intervener] and its distributor and take over
their market share’.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        declare the contested mark valid;
–        order EUIPO and the intervener to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the action in its entirety; and
–        order the applicant to pay the costs.
13      The intervener contends that the Court should:
–        dismiss the action as unfounded;
–        order the applicant to pay the costs.
Law
14      At the outset, it must be held that, by its second head of claim, the applicant requests the Court to ‘declare [the contested mark] valid’. In paragraph 4 of the application, the applicant states that it ‘claims that the Court should’ ‘annul the [contested] decision dismissing its action …
and maintain the registration of the [contested] mark’.
15      It is sufficient, in that regard, to recall, as observed by EUIPO and the intervener,
that the General Court has jurisdiction under Article 72(3) of Regulation 2017/1001 only to annul or to alter decisions of the Boards of Appeal. Thus, in so far as, by its second head of claim, the applicant seeks a declaratory judgment, the Court does not have jurisdiction to hear and determine it. Accordingly, that head of claim should be rejected on the ground of lack of jurisdiction
(see, to that effect, judgment of 14 June 2017, Aydin v EUIPO – Kaporal Groupe (ROYAL & CAPORAL), T‑95/16, not published, EU:T:2017:388, paragraph 17 and the case-law cited).
16      Furthermore, in the event that, by that second head of claim, the applicant seeks alteration of the contested decision in accordance with Article 72(3) of Regulation 2017/1001 and, therefore, the rejection of the application for a declaration of invalidity at issue, it must be noted, as EUIPO did, that, in accordance with the case-law, the power conferred on the General Court to alter decisions does not have the effect of conferring on it the power to substitute its own assessment for that of a Board of Appeal of EUIPO, or of carrying out an assessment on which that Board of Appeal has not yet adopted a position (see judgment of 21 July 2016, Apple and Pear Australia and Star Fruits Diffusion v EUIPO, C‑226/15 P, EU:C:2016:582, paragraph 67 and the case-law cited).
17      In the present case, the Cancellation Division and the Board of Appeal examined the application for a declaration of invalidity at issue on the basis of only one of the two provisions relied on by the intervener before them. They therefore did not rule on the possible application, in this case, of Article 60(1)(c) of Regulation 2017/1001, read in conjunction with Article 8(4) thereof. In those circumstances, even if, by its second head of claim, the applicant intended to request
the alteration of the contested decision, its claim must be dismissed at the outset. Moreover, and in the light of the foregoing, there is no need to examine the arguments put forward by the applicant in paragraphs 63 to 69 of the application, concerning the application in the present case of Article 60(1)(c) of Regulation 2017/1001, read in conjunction with Article 8(4) of that regulation.
18      In the light of the foregoing, it must be held that the applicant puts forward a single plea in law, alleging infringement of Article 59(1)(b) of Regulation 2017/1001.
The applicable law rationae temporis
19      In view of the date of submission of the application for registration at issue, that is to say, 7 March 2017, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009
(see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited). Furthermore,
in accordance with settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited).
20      Accordingly, in this case, first, with regard to the substantive rules, the references made by the Board of Appeal, in the contested decision, and by the parties, in their arguments, to the provisions of Regulation 2017/1001 must be understood as referring to the identical provisions of Regulation No 207/2009. Second, with regard to the procedural rules, the dispute is governed inter alia by the provisions of Regulation 2017/1001.
The single plea in law, alleging infringement of Article 52(1)(b) of Regulation No 207/2009
21      In support of its single plea in law, the applicant relies on two complaints alleging errors of assessment relating, respectively, to its presumed knowledge of the existence and use of the Chinese mark Agate in Bulgaria and its intentions at the time of filing the application for registration of the contested mark.
22      It should be recalled, at the outset that, if a concept set out in Regulation No 207/2009 is not defined by that regulation, its meaning and scope must be determined by considering its usual meaning in everyday language, whilst also taking into account the context in which it occurs and the objectives pursued by that regulation (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 43
and the case-law cited).
23      That applies to the concept of ‘bad faith’ referred to in Article 52(1)(b) of Regulation No 207/2009, in the absence of any definition of that concept by the EU legislature (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 44).
24      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 moreover be understood in the context of trade mark law, which is that of the course of trade. In that regard, Council Regulations (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), No 207/2009 and No 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 by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 45
and the case-law cited).
25      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 recalled in paragraph 24 of this judgment (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 46).
26      The intention of an applicant for a trade mark is a subjective factor which must, however, be determined objectively by the competent administrative or judicial authorities. Consequently, any claim of bad faith must be the subject of an overall assessment, taking into account all the factual circumstances relevant to the particular case. It is only in that manner that a claim of bad faith can be assessed objectively (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 47
and the case-law cited).
27      In that regard, in the case of an application for a declaration of invalidity based on Article 52(1)(b) of Regulation No 207/2009, there is no requirement whatsoever that the applicant for that declaration be the proprietor of an earlier mark for identical or similar goods or services (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 53). Furthermore, in cases where it transpires that, at the time of the application for the contested mark, a third party was using, in at least one Member State, a sign identical with, or similar to, that mark, the existence of a likelihood of confusion on the part of the public need not necessarily be established in order for Article 52(1)(b) of Regulation No 207/2009 to apply
(judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 54).
28      It follows only from the case-law 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, 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. That factor is, however, only one relevant factor among others to be taken into consideration
(judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 55).
29      In that regard, in accordance with the case-law,
a presumption of knowledge, by the applicant for registration of a sign, of the use by a third party of an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought may arise, inter alia, from general knowledge in the economic sector concerned of such use, and that knowledge can be inferred, inter alia, from the duration of such use. The more that use is long-standing, the more probable it is that the applicant will, when filing the application for registration, have knowledge of it
(see, by analogy, judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraph 39).
30      Other factors may be taken into account in the context of the overall analysis undertaken pursuant to Article 52(1)(b) of Regulation No 207/2009, such as the earlier use of the word or initials of the contested mark in business as a mark, in particular by competing undertakings, and of the commercial logic underlying the filing of the application for registration of that word or sign as an EU trade mark (judgment of 8 May 2014, Simca Europe v OHIM – PSA Peugeot Citroën (Simca), T‑327/12, EU:T:2014:240, paragraph 39).
31      Furthermore, it is for the applicant for a declaration of invalidity who intends to rely on Article 52(1)(b) of Regulation 2017/2009 to establish 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 applicant being presumed until proven otherwise (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 34 and the case-law cited).
32      This being so, where EUIPO finds that the objective circumstances of the particular case relied on by the applicant for a declaration of invalidity may lead to the rebuttal of the presumption of good faith applying to the application for registration of the mark at issue, it is for the proprietor thereof to provide plausible explanations on the objectives and commercial logic pursued by the application for registration of that mark
(judgment of 23 May 2019, ANN TAYLOR and AT ANN TAYLOR, T‑3/18 and
T‑4/18, EU:T:2019:357, paragraph 36).
33      The owner of the trade mark is best placed to provide EUIPO with information on his or her intentions at the time of applying for registration of that mark and in order to provide it with evidence capable of convincing it that, in spite of the existence of objective circumstances such as those referred to in paragraph 32
above, those intentions were legitimate (see judgment of 23 May 2019, ANN TAYLOR and AT ANN TAYLOR, T‑3/18 and T‑4/18, EU:T:2019:357, paragraph 37 and the case-law cited).
34      It is in the light of those considerations that the applicant’s complaints must be addressed.
The first complaint, alleging an error of assessment of the Board of Appeal relating to knowledge of the existence of the Chinese mark Agate
35      The applicant claims that, contrary to what was found in the contested decision, it had no knowledge either of the existence of tyres imported under the mark AGATE or of the existence of the intervener and Omnifak before, at the very least, 14 March 2017, the date of publication of its application for registration, and that it was only after the registration of the contested mark that it was in a position to enforce its rights.
36      While acknowledging that, in some cases, knowledge of the use of a sign by the proprietor of a contested mark under an application for a declaration of invalidity such as the application at issue may be presumed, the applicant
takes the view that this is not the case here.
37      More specifically, such knowledge on the applicant’s part cannot be presumed on the basis of ‘general knowledge in the economic sector concerned or duration of use’,
because the number of tyres sold by Omnifak under the mark AGATE during the period from 2014 to 2017 does not exceed 0.06% of the total number of tyres imported into Bulgaria per year, which is ‘basically nothing’. The applicant cannot therefore be required to be aware of the activities of ‘all the minor competitors’, or of all its competitors and of their trade marks in the European Union, particularly since the intervener has never claimed that its mark ‘is a well-known trade mark’.
38      The applicant submits, in any event, that the documents provided to EUIPO by the intervener in order to establish use of its mark in Bulgaria and, in particular the number of tyres sold by Omnifak under the Chinese mark Agate, had been ‘modified’ by the intervener, which ‘falsified’, in that regard, ‘private and public documents’.
39      More specifically, the intervener ‘consciously manipulated customs declarations, forwarding false documents to EUIPO’. It is ‘clear that [the intervener and Omnifak] created [from scratch] the documents submitted subsequently’ to EUIPO and the latter should have doubts as to the accuracy of that evidence and its probative value. The applicant unsuccessfully requested
that the Bulgarian customs authorities provide it with the actual number of imports carried out by Omnifak and requested EUIPO to contact those services for that purpose. It also requests the Court to request that information from the competent department of the Bulgarian Ministry of Finance.
40      The applicant notes, moreover, that, before the registration of the contested mark, it took all due care to carry out, through the offices of a lawyer specialising in trade mark law, a search for earlier trade marks, in order to ascertain
whether the mark AGATE was available ‘worldwide’. According to the conclusions of that report, there is no conflicting right in Europe or China, but only ‘in Japan, Russia and Mexico’ held by third parties. The applicant could not have been aware of the existence of the
earlier Chinese mark, ‘as it did not appear on their search report and [its] use … in Bulgaria [merely
had] local [significance]’.
41      EUIPO and the intervener dispute the arguments put forward by the applicant.
42      In that regard, it should be noted that, in order to reach the conclusion that the applicant must have been aware of the contested mark on the date on which the application for registration of that mark was filed, the Board of Appeal took account of the three factors set out below.
43      First, the Board of Appeal took account of the fact that the applicant claimed that it had carried on its activities in the same niche market as the intervener, namely in the tyre
sale market and, moreover, in the same territory as the intervener’s distributor, Omnifak, that is to say, Bulgaria. The Board of Appeal found that, given the performance of that activity, the applicant ‘must have known [about the existence of] its competitor in that field, all the more so since both
[it] and Omnifak were based in Sofia’.
44      Second, it is apparent from the contested decision that the Board of Appeal took account of the fact that the applicant had claimed, first, that it became involved in the tyre business in Bulgaria in 2016 following an agreement concluded with a Chinese manufacturer and, second, that it had also marketed, on the website
www.annite.bg, heavy-duty truck
tyres under the brand ANNAITE. According to the Board of Appeal, emails exchanged between that Chinese manufacturer and the applicant’s representative, which were submitted to it by the applicant, suggest that the applicant ‘was already familiar with Chinese tyre manufacturers and the products offered by its competitors on the Bulgarian market, as he [mentioned] explicitly that he [had] already contacted and received offers from other Chinese manufacturers while negotiating the terms [of the agreement with his
correspondent]’.
45      It should be held, in that regard, that, in the light of those two factors mentioned in the contested decision, namely the relatively limited nature of the market for the sale of automobile tyres in Bulgaria and the common origin in China of the tyres
supposedly marketed by both the applicant and the intervener, the Board of Appeal was entitled to presume that, at the time of filing the application for registration, the applicant had knowledge of the activities of its direct competitor in Bulgaria and, in particular the marketing of tyres made in China under a mark highly similar to the contested mark.
46      It is true that the evidence provided by the intervener shows, actually, only use of the Chinese mark Agate in Bulgaria between 2014 and 2017, that is to say during a period which may appear relatively short. However, in accordance with the case-law referred to in paragraph 29 of this judgment, the duration of use of a sign is only one of the considerations which may be taken into account in order to presume knowledge of it for the purposes of applying Article 52(1)(b) of Regulation No 207/2009. It was therefore necessary, in the present case, to take account of other factors, such as (i) the use of the Chinese trade mark Agate by an undertaking operating on the same market as the applicant, namely by a competing undertaking within the meaning of the case-law referred to in paragraph 30 of this judgment, and (ii) the fact that the goods covered by both the Chinese mark Agate and those marketed, according to the applicant’s claims, by that applicant were manufactured in China, namely by manufacturers, which were by definition, in competition. Those two factors are sufficient reasonably to restrict the circle of competitors whose commercial activities may be presumed to be known to the applicant, even if it is accepted, as the applicant submits (see paragraph 37 of this judgment) that it cannot be required to know all its competitors and their activities.
47      The arguments put forward by the applicant cannot call into question the findings of the Board of Appeal in that regard.
48      As regards, in particular, the applicant’s line of arguments that it could not have been aware of the use of the Chinese trade mark Agate in the Bulgarian territory, because the number of tyres sold by Omnifak under that mark in the period from 2014 to 2017 was minimal (see paragraph 37 of this judgment), it is sufficient to note that the Board of Appeal stated, in paragraph 41 of the contested decision, that Omnifak had imported from China and sold in Bulgaria, during the period from 2014 to 2017, 23 000 ‘AGATE’ tyres out of a total of 340 000 tyres imported from China into that market, a quantity that cannot be considered insignificant. Furthermore, it must be pointed out that the Board of Appeal’s finding was not disputed by the applicant and that, in any event, that applicant has not provided proof to the contrary.
49      The applicant claims that, in any event, the documents by which the intervener seeks to prove the sales in question are ‘false’, ‘falsified’ and ‘manipulated’ (see paragraphs 38 and 39 of this judgment). It also requests the Court to seek relevant information from the competent Bulgarian authorities.
50      In that regard, the following should be noted.
51      First, the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO, for the purposes of
Article 72 of Regulation No 2017/1001. Consequently, it is not the Court’s function to review the facts in the light of evidence produced for the first time before it (see judgment of 29 April 2020, Kerry Luxembourg v EUIPO – Döhler (TasteSense By Kerry), T‑108/19, not published, EU:T:2020:161, paragraph 32 and the case-law cited). Admittedly, it cannot be ruled out that a party may rely, before the Court, on the existence of evidence capable of calling into question the accuracy of the content or probative value of the evidence taken into account by the adjudicating bodies of EUIPO by requesting investigative measures
to be adopted in order for that evidence to be produced, for the first time, before the Court. However, in such a case, the party requesting the adoption of such measures must explain in detail the reasons for considering that the content of the evidence taken into account by EUIPO does not correspond, in its view, to the reality or the reasons for considering that the probative value of that evidence has not been established.
52      In this case, the Board of Appeal found that ‘the invoices, the customs declarations and the tables certified by Omnifak have a clear link to each other’ and that ‘the invoices issued by Omnifak have been correctly reported in the sales registers submitted by the company [to] the Bulgarian tax authorities’ and, lastly, that ‘most of the customs declarations bear stamp and signature of an official authority’. It must be stated that the applicant does not put forward any argument and does not rely on any evidence capable of calling into question or, at the very least, raising doubts as to the authenticity of the documents which were, in its view, ‘falsified’ or ‘manipulated’ by the intervener and, thus, of calling into question the abovementioned findings of the Board of Appeal.
53      Second, and in the event that the applicant seeks to complain that EUIPO decided not to adopt any investigative measures in that regard, it must be borne in mind that, under
Article 97 of Regulation 2017/1001, requests for information and the production of documents are investigative measures which may be taken in any proceedings before EUIPO. While it is admittedly possible for parties to any proceedings before EUIPO bodies to request or propose such investigative measures in order to establish facts relevant to the case at issue, the applicable provisions do not impose an obligation on EUIPO bodies to take such measures in response to such a request (see, by analogy, judgment of 4 May 2017, Kasztantowicz v EUIPO – Gbb Group (GEOTEK), T‑97/16, not published, EU:T:2017:298, paragraph 56).
54      The adjudicating bodies of EUIPO have a broad discretion in deciding whether, in the context of proceedings before them, it is appropriate to make a request for information or for the production of documents. Taking such an investigative measure remains optional for EUIPO, which will do so only if it considers it appropriate and not automatically as a result of a request to that effect by a party (see, by analogy, judgment of 4 May 2017, GEOTEK, T‑97/16, not published, EU:T:2017:298, paragraph 57 and the case-law cited).
55      It is true that the broad discretion enjoyed by the Board of Appeal in that regard does not mean that its assessment falls outside the scope of judicial review by the Courts of the European Union. That fact does, however, restrict judicial review on the merits to ascertaining that no manifest error of assessment or misuse of powers has occurred
(see, by analogy, judgment of 4 May 2017, GEOTEK, T‑97/16, not published, EU:T:2017:298, paragraph 58 and the case-law cited).
56      In this case, it cannot be found that the Board of Appeal ignored the applicant’s claims that the documents at issue had been ‘falsified’ or ‘manipulated’ by the intervener. On the contrary, as is apparent from paragraph 52 of this judgment, it was after finding that the applicant had not provided any evidence and had not submitted any argument in support of those claims, and after examining those documents, that the Board of Appeal found that it had no reason to call into question their authenticity. Consequently, it must be held that, in those circumstances, the Board of Appeal did not commit any manifest error of assessment as regards the application of Article 97 of Regulation 2017/1001.
57      As regards, moreover, the alleged diligence that the applicant displayed prior to the filing of the application for registration of the contested mark (see paragraph 40 of this judgment), the Board of Appeal noted, in essence, in
paragraph 46 of the contested decision, that the applicant did not explain why the report, which it produced before the adjudicating bodies of EUIPO and the Court, contained no information concerning the Chinese trade mark Agate, while the search for earlier trade marks which it had ordered was supposed to relate to the overall market and the tyres manufacturer which would become its supplier was a Chinese company and, therefore, a direct competitor of the intervener.
58      In that regard, it should be noted that neither the geographical scope of the search ordered by the applicant nor the specific extent of the request of that applicant is apparent from the abovementioned report or from any other material in the file. That is the case, in particular, with the statement of fees related thereto, which refers only to a ‘Preliminary search of AGATE trademark’, without giving further details as to the extent of that search.
59      It should be noted, moreover, first, that the report in question states that the research carried out has not revealed any registration or application for registration of signs similar or identical to the contested mark before the competent Bulgarian authority. Second, the report refers to the existence of three European trade marks which, according to the signatory of the report, should not prevent registration of the contested mark. Third, it is stated therein that no international registration or application for international registration of a trade mark similar or identical to the contested mark was found. Fourth, the signatory of the report states that the research carried out revealed the existence of ‘trademarks that are not valid in the territory of the Republic of
Bulgaria and the [European Union]’, namely a national Mexican mark, a Russian national mark and a Japanese national mark, which are all three at least highly similar to the contested mark.
60      It follows from the foregoing that the abovementioned report does not categorically rule out the existence of marks similar or identical to the contested mark, registered in other third countries, and that it is more reserved on that point than with regard to conclusions relating to the search for international registrations. It follows that, in the light of all of those findings, the applicant’s alleged diligence cannot be regarded as proven.
61      Third, the Board of Appeal took account of the short period between the filing of the contested mark and its registration, on 7 March and 21 June 2017 respectively, on the one hand, and, the application for coercive measures, lodged by the applicant with the Bulgarian customs authorities against the intervener and its distributor on 5 July 2017
and the infringement action filed on 6 July 2017 before the Bulgarian Patent Office against that distributor, on the other. According to the contested decision, the fact that, so shortly after the registration of the contested mark, the applicant’s
actions were directed at the intervener and its distributor ‘shows that it was well prepared to target [the intervener and its distributor] and that it already knew about the use of the [Chinese] mark Agate by the [intervener] through Omnifak’.
62      It should be noted, as the intervener submits, that the applicant merely asserts, in that regard, that it had knowledge of the use of the Chinese mark Agate in Bulgaria by the intervener’s distributor only after the publication, on 14 March 2017, of the application for registration of the contested mark. It explains, moreover, that it was only after the registration of that mark, on 21 June 2017, that it was in a position, under the legislation in force, to enforce its rights (see paragraph 35 of this judgment).
63      However, it should be held, as the Board of Appeal did, that the applicant does not explain in any way in its written pleadings how and by what means it became aware of the existence of the use of the Chinese mark Agate in Bulgaria only after the publication of the application for registration of the contested mark. The applicant does not rely on any specific event which could have drawn its attention to the activities of the intervener’s distributor which would have occurred after 6 March 2017, the date of the signature of the report referred to in paragraphs 57 to 59 of this judgment, produced by the applicant for the purposes of establishing that, as of
7 March 2017, it had no knowledge of the use of the Chinese mark Agate in Bulgaria. Accordingly, irrespective of the fact that the applicant had, after the registration of the contested mark, the right to take action in order to protect the contested mark, it is necessary to endorse the fact that, in its overall assessment, the Board of Appeal also took account of the chronology of events set out above.
64      In the light of all the foregoing considerations, the first complaint must be rejected.
The second complaint, alleging an error of assessment relating to the applicant’s intentions at the time of filing the application for registration of the contested mark
65      By the second complaint, the applicant complains of errors allegedly made by the Board of Appeal in its assessment of various items of evidence provided by the intervener and the conclusions, which the Board of Appeal drew therefrom as regards the applicant’s intentions at the time when the application for registration of the contested mark
was filed. It also draws attention to
factors and circumstances which the Board of Appeal should not have taken into account in its global assessment for the purposes of applying Article 52(1)(b) of Regulation No 207/2009.
66      EUIPO and the intervener dispute the arguments put forward by the applicant.
67      More specifically, in the first place, the applicant alleges that the Board of Appeal did not take into account, in its assessment, the fact that it did not use the contested mark, which is, however, normal before the registration of that mark and cannot be regarded as evidence of bad faith at the time of registration. The fact that the applicant initiated proceedings in Bulgaria against the intervener’s distributor does not mean that that mark was registered in bad faith. It took those steps after the registration of the contested mark, because, previously, it could not ‘enforce its rights’.
68      In that regard, it must be borne in mind that, in the assessment of bad faith, the proprietor of a contested mark in the context of an application for a declaration of invalidity, such as the application at issue, is not required to prove use of that mark. In the context of such an assessment, it is not a matter of examining the use which has been made of that mark, but rather of assessing whether, at the time of filing the application for its registration, it was intended to make use of it (see, to that effect, judgment of 13 December 2012, pelicantravel.com v OHIM – Pelikan (Pelikan), T‑136/11, not published, EU:T:2012:689, paragraphs 57 and 58).
69      It cannot therefore be ruled out that, in a case such as the present case, the absence of such an intention may be inferred from the circumstances of the case and, more specifically, from the complete absence of evidence relating to the commercial activities of the proprietor of the contested mark. Such evidence is capable of being relevant in the assessment of the commercial logic underlying the filing of the application for registration of the contested mark, for the purposes of the case-law cited in paragraph 30 of this judgment.
70      In the present case, it is true that the Board of Appeal took into account, in its global assessment, the fact that the applicant did not produce any evidence capable of establishing use of the contested mark or the sale of tyres
by it under another mark. Moreover, the applicant does not appear to substantiate its challenge of
the Board of Appeal’s finding. It should be noted that the fact referred to above was not assessed by the Board of Appeal in isolation, but only as evidence capable of demonstrating the applicant’s commercial strategy. Thus, the Board of Appeal found that the applicant had not established its activity either in the field of tyre sale or in the agricultural field, which was supposed to be its core business, at least before 2015.
71      In any event, according to the Board of Appeal, the applicant did not provide, to the adjudicating bodies of EUIPO, any reasonable explanation concerning the extension of its commercial activities
in the agricultural field to the tyre sector, while it is apparent from the evidence produced by the applicant that ‘companies that produce truck tyres do not produce agricultural [automobile] tyres’. By taking account of all of that evidence, and not merely of the lack of use of the contested mark, the Board of Appeal was entitled to conclude that there was no commercial logic underlying the application for registration of the contested mark. Accordingly, the related arguments put forward by the applicant in that regard must be rejected.
72      The same is true as regards the applicant’s argument,
which disputes the taking into account, in the assessment of its alleged bad faith, of the fact that it initiated proceedings against the intervener’s distributor in Bulgaria.
73      In that regard, the Board of Appeal took account of the applicant’s steps only in so far as they formed part of the context of all of that applicant’s activities in relation to the contested mark. The Board of Appeal was thus entitled to conclude, without committing any error, that, in view of the short period of time that elapsed between filing the application for registration of the contested mark and taking drastic measures in defence of that mark after its registration, it was reasonable to consider that the applicant ‘was well prepared to target [the intervener and its distributor] and that it already knew about the use of the [Chinese] mark Agate by the [intervener] through Omnifak’. The Board of Appeal found that, in the light of those steps taken by the applicant, placed in the context of the present case, the applicant’s ‘intentions, [were] not a preliminary attempt to prevent any infringement of [its] freshly registered mark, but a planned endeavour with the goal of taking advantage
of the [intervener’s] failure to … protect its [Chinese] mark
“Agate” in Bulgaria’.
74      In the light of the foregoing, the Board of Appeal did not question the applicant’s right to defend the contested mark as such.
It merely took, in that regard, the abovementioned circumstances into account in its overall assessment and found that, given that ‘there was no commercial logic underlying the application for registration of the contested mark’ (see paragraph 70 of this judgment) and the applicant’s only activity related to that mark was ‘hindering others’,
the applicant ‘pursued dishonest purposes’.
Accordingly, the arguments put forward by the applicant in that regard must be rejected.
75      As regards, in the second place, the arguments put forward by the applicant in order to call into question the intervener’s claims that agents linked to the applicant contacted representatives of Omnifak’s clients with the aim of canvassing them to the detriment of the intervener, the Court makes the following observations.
76      Those claims submitted by the intervener during the administrative procedure are based on affidavits signed by five representatives of the clients concerned of Omnifak. According to those statements, between April and June 2017, Omnifak’s clients
were visited by individuals related to A, the applicant’s representative, and to the applicant, who offered to terminate their commercial relations with Omnifak and replace the tyres provided by the latter with tyres provided ‘by those individuals and related companies’.
77      It must, in that regard, be recalled that, in accordance with the case-law, in order to assess the evidential value of a document, such as those produced by the intervener, regard should be had first and foremost to the credibility of the account it contains. It is then necessary to take account of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appears sound and reliable (see judgment of 13 June 2012, Süd-Chemie v OHIM – Byk-Cera (CERATIX), T‑312/11, not published, EU:T:2012:296, paragraph 29 and the case-law cited). Furthermore, where such statement is signed by a person related to the party which produces it as evidence, in general, a probative value cannot be attributed to it unless its content is supported by other evidence (see, to that effect, judgments of 13 June 2012, CERATIX, T‑312/11, not published, EU:T:2012:296, paragraph 30
and the case-law cited, and of 17 December 2015, Bice International v OHIM – Bice (bice), T‑624/14, not published, EU:T:2015:998, paragraphs 55 to 59 and the case-law cited).
78      In the present case, there is nothing in the file to call into question the probative value of the affidavits produced by the intervener as a whole. Furthermore, since the entities concerned by the statements in question are separate entities from the intervener and its distributor, there is nothing in the file to suggest a link, within the meaning of the case-law cited in paragraph 77 of this judgment, between the signatories of those statements and the intervener or Omnifak.
79      The arguments put forward by the applicant cannot call those findings into question.
80      First, the applicant calls into question the probative value of those statements, by disputing the very existence of ‘two of [those companies, namely IRG TRANS Ltd and PELETI TRANS Ltd] [which] have actually the same company address’, while ‘others are not involved in the [field of] tyres
[or the] transport industry’. It also observes that, as regards the statement allegedly signed by the manager of PELETI-TRANS, it contains errors as to the ‘VAT number’ of that company and the first name of its manager.
81      It should be noted that the applicant has provided, in that regard, only an extract from the commercial register issued by the Bulgarian Ministry of Justice containing information on the company PELETI-TRANS.
It is true that the ‘UIC/PIC’ number which appears on the statement provided by the intervener to the adjudicating bodies of EUIPO, to which the applicant appears to refer in its written pleadings by using the expression ‘VAT number’, does not correspond exactly to the number which appears on that extract from the Bulgarian commercial register. The same is true in respect of the first name of the manager of that company. Indeed, the first name of the latter, as it appears on the extract from the commercial register provided by the applicant, does not correspond to that displayed on the statement provided by the intervener to the adjudicating bodies of EUIPO.
82      However, as regards the ‘UIC/PIC’ number, the inaccuracy mentioned by the applicant, which is the simple inversion of two digits, is capable, by its very nature, of resulting from a mere typographical error. Nor can such an error be ruled out as regards the first name of the manager of that company, in so far as the two first names displayed on the two abovementioned documents begin and end with the same letters. It must be stated that those inaccuracies do not truly call into question the content of the statement of the manager of the company concerned, let alone the content of the other statements provided by the intervener referred to in paragraph 76 of this judgment.
83      The same applies to the other evidence relied on by the applicant in that regard. In the absence of other evidence, the fact that two of the companies concerned by the statements provided by the intervener have their registered office at the same address does not call into question either the content of their managers’ statements or the probative value of those statements. Lastly, the applicant has adduced no evidence capable of supporting its claims that some of those companies do not operate on the relevant market in the present case.
84      Second, the applicant produces a statement signed before a notary public by A, its representative, that the latter does not know any of the signatories to the abovementioned statements and that he never met them, that those documents constitute false statements and that the applicant does not have any commercial agents, since he personally carries out all the commercial transactions made in that applicant’s name.
85      As the Board of Appeal stated in paragraph 44 of the contested decision, the statement of the applicant’s representative is not capable of calling into question the content of the statements provided by the intervener before the adjudicating bodies of EUIPO, in so far as that statement does not rule out the possibility that other individuals, not necessarily commercial agents, related to the applicant could have contacted the clients concerned of Omnifak. Moreover, in the light of the case-law referred to in paragraph 77 of this judgment, and in the absence of other evidence capable of supporting the content of the statement of the applicant’s representative, the probative value of that document remains relative and, therefore, cannot call into question the probative value of the statements submitted by the intervener.
86      Third, the applicant produces a statement signed by one of the signatories of the statements referred to in paragraph 76 of this judgment, by which that person ‘renounce[s] the circumstances declared by [him]’ and states that ‘[that] information is true and correct’. According to the applicant, it must be inferred from this that that person ‘lied and he does not want to be responsible of perjury’.
87      It must be stated, as the Board of Appeal did, that, even considering that one of the clients of Omnifak may have withdrawn his statements, this is not the case of
the four other signatories of the statements referred to in paragraph 76 of this judgment. Moreover, the content of his second statement does not contain any evidence capable of calling into question the other four statements submitted by the intervener. In that regard, even considering that the authenticity of one of those four statements could have been questioned on the basis of errors therein (see paragraphs 81 and 82 of this judgment), it is important to recall that the applicant has failed to challenge the content and the probative value of at least three of the statements referred to in paragraph 76 of this judgment.
88      Fourth, the applicant allegedly ‘initiated criminal proceedings in Bulgaria against each of [the signatories of the statements referred to in paragraph 76 of this judgment] for false accusations’.
However, the competent prosecutor, according to the applicant,
for reasons which do not relate to the substance of the case, decided
not to examine its complaints. The applicant produces, in that regard, a document from the prosecutor’s office, which received its complaints. According to that document, the allegedly false statements made by the individuals referred to in paragraph 76 above had not been made to any ‘authority’ within the meaning of Article 286 of the Bulgarian Criminal Code and cannot, therefore, be classified as criminal acts on the basis of that provision, which is the reason for not pursuing the applicant’s complaint.
89      Without it being necessary to rule on the admissibility of that document, which was produced, as EUIPO noted, for the first time before the Court, it must be held that it contains no evidence capable of calling into question the probative value of the statements referred to in paragraph 76 of this judgment. No conclusion can be drawn from that document concerning the accuracy of the content of those statements or the circumstances in which they were signed. The fact that the applicant chose to bring criminal proceedings against the signatories of those statements is not in itself sufficient to raise doubts as to their probative value.
90      Fifth, the applicant claims that it is apparent from the intervener’s and its distributor’s websites that the companies concerned by the statements referred to in paragraph 76 of this judgment ‘do not promote or sell [goods bearing] the mark AGATE’. Moreover, no promotional media, such as catalogues or advertisements, have been provided by the intervener demonstrating the use of its mark in Bulgaria. The intervener thus ‘artificially constructed through private party documents an appearance of commercialisation of the AGATE tyre in Bulgaria’.
91      It is sufficient, in that regard, to note that the Board of Appeal stated, in paragraphs 43 and 53 of the contested decision, that the intervener and its distributor stopped, on the basis of threats to be prosecuted, the export, import and distribution of tyres under the Chinese trade mark Agate on the Bulgarian market, which is, logically, a plausible explanation of the facts relied on by the applicant. Moreover, while the applicant challenges in general terms the use of the Chinese mark Agate in Bulgaria during the period from 2014 to 2017, it has not, however, been able to adduce evidence capable of calling into question the evidence provided in that regard by the intervener (see paragraphs 49 and 56 of this judgment).
92      In the third place, the applicant claims that EUIPO cannot base its assessment, in this case, solely on the fact that it did not explain ‘how it [thought] about the [contested] trademark, as it is not important’. The applicant explains, however, that it chose the name ‘AGATE’, ‘which means,
in Bulgarian,
precious stone’, because the term ‘amberstone’, which was made up of one of the Chinese tyres marks which it had sold since 2015, also means ‘precious stone’ in Bulgarian.
93      It is sufficient to note, in the light of the foregoing, that the Board of Appeal did not base its assessment solely on the fact that the applicant did not explain the process whereby it conceived the contested mark.
94      In the fourth place, the applicant submits that the Board of Appeal wrongly took into consideration the intervener’s claim that ‘on 26 July 2018, [the applicant] suggested the unreasonable amount of EUR 36 million for the transfer of the contested [mark]’. The applicant disputes the accuracy of that claim, by claiming that the evidence adduced in that regard by the intervener, namely an email from the Bulgarian lawyer of that applicant and Omnifak, a person, therefore, connected with those companies, is a document under private signature, which does not mention any name and has no probative value. However, the Board of Appeal regarded it as valid evidence.
95      It should be noted, in that regard, that, in the light of the case-law referred to in paragraph 77 of this judgment, it cannot be ruled out that the probative value of an email sent to an interested party by its legal representative may be minimised, in particular if the information contained therein is not supported by any other evidence. In this case, it is true that, while stating the source of the information referred to in paragraph 94 of this judgment and the fact that that information was not supported by other evidence in the file, the Board of Appeal referred to it in detail. However, that information, even if it is not proven, constitutes only one item of the evidence which the Board of Appeal took into account in its overall assessment, and that fact cannot, in itself, call into question the findings reached by that Board of Appeal, which, in the light of the foregoing analyses, are supported to the requisite legal standard by the other evidence in the file.
96      In the fifth place, the applicant submits that the intervener has no interest in the EU market and its sole aim is to exclude it from that market. According to its research, the intervener has, since 2009, filed at least 90 applications for registration in respect of at least 8
different trade marks for goods in Class 12 in various countries. All of those marks were applied for in Bulgaria and in the European Union, although the intervener had not filed any application for registration of the mark Agate in Bulgaria before the registration of the contested mark. Accordingly, it is difficult to believe that the intervener, which has more than 90 marks and invested significant sums for their protection, has used a mark for four years in Bulgaria without applying for registration of that mark in that country or in the European Union.
97      In that regard, it must be held that the Board of Appeal did not, and was not required to examine in detail, for the purposes of applying Article 52(1)(b) of Regulation No 207/2009, the intervener’s commercial strategy and specific intentions. In any event, the Board of Appeal stated, in paragraph 53 of the contested decision, that ‘the fact that Omnifak and [the intervener], in September 2017, protected the [Chinese
mark Agate] by filing applications for registration in Bulgaria seem[ed] to be a logical step in [their] defence against the acts of [the applicant]’.
There is nothing in the file capable of calling that finding into question and the applicant does not provide any specific evidence in that regard. Moreover, as regards, more specifically, the intervener’s presence and interest in the EU market, as stated in paragraph 91 of this judgment, the applicant was not in a position to call into question the evidence produced by the intervener seeking to establish use of the Chinese mark Agate in Bulgaria.
98      In the light of all the foregoing considerations, the second complaint must be rejected and, accordingly, it must be held that the Board of Appeal did not err, in its overall assessment, in upholding the decision of the Cancellation Division and dismissing the action brought before it by the applicant.
99      The single plea in law, alleging infringement of Article 52(1)(b) of Regulation No 207/2009, must therefore be rejected and, therefore, the present action must be dismissed in its entirety.
Costs
100    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.
101    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 (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Agro EOOD to pay the costs.
Costeira
Gratsias
Kancheva
Delivered in open court in Luxembourg on 29 September 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.