Outsource Professional Services Ltd v European Union Intellectual Property Office.
Date: 2019-11-13
Secondly, the appellant claims that the General Court should have included in its assessment each of the factors set out in the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361), and cited in paragraph 23 of the judgment under appeal. The General Court erred in law by subsequently finding that it was not necessary for all those elements to be taken into account.
Under the second subparagraph of Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal lies on points of law only. The General Court thus has exclusive jurisdiction to find and appraise the relevant facts and assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts or evidence are distorted, constitute points of law subject, as such, to review by the Court of Justice on appeal (see, inter alia, judgments of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 68, and of 31 January 2019, Pandalis v EUIPO, C‑194/17 P, EU:C:2019:80, paragraph 51).
In addition, such distortion must be obvious from the documents in the Court’s file, without there being any need to carry out a new assessment of the facts and the evidence. The appellant must indicate precisely the evidence alleged to have been distorted by the General Court and show the errors of appraisal which, in its view, led to that distortion (see, to that effect, judgment of 31 January 2019, Pandalis v EUIPO, C‑194/17 P, EU:C:2019:80, paragraphs 52 and 53 and the case-law cited).
Contrary to the appellant’s argument, it is not necessary for a likelihood of confusion on the part of the public to be established in order for Article 52(1)(b) of Regulation  No 207/2009 to apply. In the absence of any likelihood of confusion between the sign used by a third party and the contested mark, or if there has been no use, by a third party, of a sign identical, or similar to, the contested mark, other factual circumstances may, in some cases, constitute relevant and consistent indicia establishing the bad faith of the trade mark applicant. Where it is apparent from those other circumstances that the holder of the contested mark filed the application for registration of that mark with the intention of undermining, in a manner inconsistent with honest practice, 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, such an intention must result in the application of the absolute ground for invalidity referred to in Article 52(1)(b) of Regulation  No 207/2009, whether or not there was a likelihood of confusion on the part of the public (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 46, 54 and 56).
The scope of Article 52(1)(b) of Regulation  No 207/2009 as set out above is not invalidated by the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361), cited by the appellant. It only follows from that judgment 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 at the time the application for registration of the contested mark was lodged, 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 was aware of that fact (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 55).
The intention of an applicant for a trade mark, as referred to in paragraph 61  above, 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 (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).
Those findings are not vitiated by any error of law and there was no need to provide further reasoning. In that regard, it is sufficient to state that the absolute ground for invalidity referred to in Article 52(1)(b) of Regulation  No 207/2009 is fundamentally different from the relative ground for invalidity referred to in Article 53(1)(a) of that regulation, since the latter provision presupposes the existence of an earlier trade mark referred to in Article 8(2) of that regulation as well as the existence of a likelihood of confusion, within the meaning of Article 8(1)(b) of that regulation, unless that earlier mark has a reputation within the meaning of Article 8(5) of Regulation No 207/2009 or unless Article 8(1)(a) thereof applies. However, in the case of an application for a declaration of invalidity based on Article 52(1)(b) of that regulation, 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).