Judgment of the General Court (Third Chamber) of 29 November 2018 –

Khadi and Village Industries Commission v EUIPO — BNP Best Natural Products (Khadi Ayurveda)

(Case T‑683/17)

(EU trade mark — Invalidity proceedings — EU word mark ‘Khadi Ayurveda’ — Production of evidence for the first time before the Board of Appeal — Discretion of the Board of Appeal — Article 76(2) of Regulation (EC) No 207/2009 (now Article 95(2) of Regulation (EU) 2017/1001) — Absolute grounds for refusal — Mark of such a nature as to deceive the public — Article 7(1)(g) of Regulation No 207/2009 (now Article 7(1)(g) of Regulation 2017/1001) — No bad faith — Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001))

1. EU trade mark — Procedural provisions — Examination of the facts of EUIPO’s own motion — Invalidity proceedings concerning absolute grounds for refusal — Examination restricted to the submissions of the parties (Council Regulation No 207/2009, Arts 7(1), 52, 55 and 76(1)) (see paras 12, 13)

2. EU trade mark — Appeals procedure — Action brought against a decision by the Cancellation Division of EUIPO — Examination by the Board of Appeal — Scope — Evidence submitted for the first time before the Board of Appeal — Account taken — Discretion of the Board of Appeal (Council Regulation No 207/2009, Arts 64(1) and 76(2); Commission Regulation No 2868/95, Art. 1, Rule 50(1), third para.) (see paras 19-21)

3. EU trade mark — Appeals procedure — Action brought against a decision by the Cancellation Division of EUIPO — Examination by the Board of Appeal — Scope — Application by analogy of rule 50(1) of Regulation No 2868/95 in the context of proceedings for a declaration of invalidity on absolute grounds for refusal — Not permissible (Council Regulation No 207/2009, Arts 7, 52(1), and 76(2); Commission Regulation No 2868/95, Art. 1, Rule 50(1), third para.) (see para. 23)

4. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Trade marks likely to deceive the public — Criteria for assessment (Council Regulation No 207/2009, Art. 7(1)(g)) (see paras 44-46)

5. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(g) of Regulation No 207/2009 — Word mark Khadi Ayurveda (Council Regulation No 207/2009, Arts 7(1)(g) and 52(1)(a)) (see paras 48, 53, 54)

6. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Applicant in bad faith when lodging the trade mark application — Criteria for assessment — Taking into account of all relevant factors at the time of filing the application for registration — Applicant’s knowledge that a third party is using an identical or similar sign — Intention of the applicant — Degree of legal protection of the signs at issue — Commercial logic underlying the registration of the contested sign as an EU trade mark — Chronology of events characterising the filing of the trade mark application (Council Regulation No 207/2009, Art. 52(1)(b)) (see paras 60-64)

7. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Applicant in bad faith when lodging the trade mark application — Word mark Khadi Ayurveda (Council Regulation No 207/2009, Art. 52(1)(b)) (see para. 71)

8. EU trade mark — Appeals procedure — Action before the EU judicature — Power of the General Court to alter the contested decision — Limits (Council Regulation No 207/2009, Art. 65(2) and (3)) (see para. 73)

Re:

Action brought against the decision of the Fifth Board of Appeal of EUIPO of 12 July 2017 (Case R 2086/2016-5) relating to invalidity proceedings between Khadi and Villages Industries Commission and BNP Best Natural Products.

Operative part

The Court:

1. Dismisses the action;