Source: EURLEX
Language: en
Format: md

Case T‑456/15

Foodcare sp. z o.o.

v

European Union Intellectual Property Office

‛EU trade mark — Invalidity proceedings — EU word mark T.G.R. ENERGY DRINK — Bad faith — Article 52(1)(b) of Regulation (EC) No 207/2009’

Summary — Judgment of the General Court (Sixth Chamber), 5 October 2016

1. 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 registration of the disputed 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))
2. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Applicant in bad faith when lodging the trade mark application — Word mark T.G.R. ENERGY DRINK

   (Council Regulation No 207/2009, Art. 52(1)(b))

1. Under Article 52(1)(b) of Regulation No 207/2009, an EU trade mark must 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 it filed the application for registration of the contested mark.

   It is for the applicant for a declaration of invalidity seeking to rely upon that ground to prove the circumstances which substantiate a finding that the EU trade mark proprietor had been acting in bad faith when it filed the application to register that mark.

   The concept of ‘bad faith’ referred to in Article 52(1)(b) of Regulation No 207/2009 is not defined, delimited or even described in any way in the legislation.

   The relevant time for determining whether there was bad faith on the part of the applicant is the time of filing the application for registration.

   In order to determine whether the applicant was acting in bad faith within the meaning of Article 52(1)(b) of Regulation No 207/2009, all the relevant factors specific to the particular case have to be taken into account, in particular:

   | — | the fact that the applicant knows or should know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product liable to be confused with the sign for which registration is sought; |

   | — | the applicant’s intention of preventing that third party from continuing to use such a sign; |

   | — | the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought. |

   That being so, the three factors set out above are only examples drawn from a number of factors which can be taken into account in order to decide whether the applicant was acting in bad faith at the time of filing the application.

   It must therefore be considered that, in the context of the overall analysis undertaken pursuant to Article 52(1)(b) of Regulation No 207/2009, account may also be taken of the origin of the sign at issue and of its use since its creation, and of the commercial logic underlying the filing of the application for registration of that sign as an EU trade mark, and the chronology of events leading up to that filing.

   Account may also be taken of the intention of the applicant, amounting, in the objective circumstances of the particular case, to the willingness to circumvent its contractual obligations, as one of the relevant factors in assessing whether the applicant acted in bad faith.

   (see paras 22-28, 44)
2. See the text of the decision.

   (see paras 33, 35, 39, 41, 44, 45)

[Top](#document1)