Language of document :

JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

26 February 2015 (*)

(Community trade mark — Invalidity proceedings — Community word mark COLOURBLIND — Word sign COLOURBLIND — Absolute ground for refusal — No bad faith — Article 52(1)(b) of Regulation (EC) No 207/2009 — No use in the course of trade of a sign of more than mere local significance — Relative ground for refusal — Article 8(4) and Article 53(1)(c) of Regulation No 207/2009)

In Case T‑257/11,

Pangyrus Ltd, established in York (United Kingdom), represented by S. Clubb, Solicitor, and M. Lindsay QC,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

RSVP Design Ltd, established in Brookfield (United Kingdom), represented initially by M. Blair, and subsequently by J. MacKenzie, Solicitors,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 23 March 2011 (Case R 751/2009-4) concerning invalidity proceedings between Pangyrus Ltd and RSVP Design Ltd,

THE GENERAL COURT (Ninth Chamber),

composed of G. Berardis, President, O. Czúcz and A. Popescu (Rapporteur), Judges,

Registrar: S. Spyropoulos, Administrator,

having regard to the application lodged at the Court Registry on 23 May 2011,

having regard to the response of OHIM lodged at the Court Registry on 23 August 2011,

having regard to the response of the intervener lodged at the Court Registry on 20 September 2011,

having regard to the decision of 25 November 2011 refusing to grant leave to lodge a reply,

having regard to the change in the composition of the Chambers of the General Court,

having regard to the Court’s written questions to the applicant and the intervener and the responses filed by those parties on 24 and 23 April 2014 respectively,

further to the hearing of 12 June 2014, initially set for 14 May 2014 and postponed at the intervener’s request,

gives the following

Judgment

 Background to the dispute

1        In 1991, Mr Cx invented a product consisting of an ‘“experimental learning” toolbox’ and the word sign COLOURBLIND.

2        In 1993, Mr Cx, together with his wife Ms A, set up the applicant company, Pangyrus Ltd, with Mr Cx holding 99% of the shares in that company and Ms A holding the remaining 1%.

3        In addition, Ms A, Mr Cx, Mr H and Mr P each had a 25% shareholding in Future Factory Ltd, a company in which Mr Cx was responsible for developing new products and training. Mr P and his wife held shares in Edinburgh Consulting Group Ltd.

4        In 1998, HBJ 429 Limited, later Cordyn Group Ltd, acquired the shares in Pangyrus through a transfer agreement (‘the 1998 agreement’), together with the shares in Future Factory and Edinburgh Consulting Group (‘the 1998 transfer’).

5        In 1999, Mr P held 70% of the shares in Cordyn Group, while Ms A, Mr Cx and Mr H each had a 10% shareholding in that company. In 1999, Ms A and Mr Cx bought Mr H’s shares, then sold 15% of their shares to Mr Ck. In 2003, Mr P continued to hold 70% of the shares in Cordyn Group, with Ms A, Mr Ck and Mr Cx holding the remaining 30%.

6        After the 1998 transfer and until his resignation on 1 August 2003, Mr Cx was employed as Creative Director for Future Factory and was in charge of designing new products and training programmes and actions.

7        In December 2002, Pangyrus filed an application with Companies House for removal from the register of companies and was removed from that register on 6 May 2003.

8        In 2003, Mr Cx resigned from his posts with Pangyrus and Future Factory, and Ms A resigned from her post with Future Factory.

9        On 8 August 2003, Ms A, Mr Ck and Mr Cx set up RSVP Design Ltd, the intervening company.

10      On 28 August 2003, Mr Cx signed a document transferring his rights in the sign COLOURBLIND to RSVP Design.

11      On 3 September 2003, RSVP Design filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

12      The mark in respect of which registration was sought is the word mark COLOURBLIND.

13      The goods and services in respect of which registration was sought are in Classes 9, 16, 28, 35 and 41 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:

–        Class 9: ‘Teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images particularly for instructional, educational, teaching and training purposes; magnetic data carriers, recording discs particularly for instructional, educational, teaching and training purposes; computers; computer software, computer programs; computer software relating to instructional, educational, teaching and training services; computer software relating to teamwork, teambuilding, management, management skills, business, business skills, personal development skills, team development skills, motivation and communication; interactive computer software; media bearing computer programs and software; media bearing recordings in sound and/or visual form; compact discs; CD ROMs; DVDs; video cassettes; audio cassettes all relating to instruction, education, teaching and training, and covers and containers for video and audio cassettes and discs relating to instruction, education, teaching and training; electronic publications; computer software and publications in electronic form supplied online from databases, from facilities provided on a global computer network or the Internet; parts and fitting[s] for all the aforementioned goods’;

–        Class 16: ‘Printed matter; printed publications; pamphlets; books; booklets; instructional and teaching material; training manuals; instructional manuals; questionnaires; brochures; reports; management guides; business documentation; printed materials relating to business consulting, management consulting, communication, human resources and training’;

–        Class 28: ‘Games and playthings; gymnastic and sporting articles; games; business training games; management training games; games in the form of team building exercises; apparatus for playing games; articles for use in playing games, educational games; teaching games; games for adults; role playing games; parts and fittings for all the aforementioned goods’;

–        Class 35: ‘Business management; business administration; office functions; advertising; business consultancy services; business organisation consultancy; management consultancy; business research; business development; business planning; business mediation; business survey services; business strategy services; business and management appraisal services; preparation of business and management reports; business and management research; business and communication strategy development and monitoring; human resources management; project management; performance management and motivation services; business or organisation efficiency services, organisation effectiveness studies; business team assessment, modification and development; data collection and management; testing and analysis for selection of personnel; corporate image studies; compilation of statistical information; providing strategies for achieving objectives, goals and changes for businesses; promoting initiatives and plans to direct, organise and focus businesses; providing methodologies for initiating business improvement; monitoring and assessment of business projects and business changes; team building services; team management; services in the fields of organisational development, efficiency and/or performance; personnel recruitment, selection, placement, deployment, management and employment; identifying personnel training needs, information, advisory and consultancy services relating to all the aforementioned services’;

–        Class 41: ‘Education, providing of training, team development training; leadership training; mentoring; personal development training; executive and personal coaching and training, training in communications; organising and conducting classes, workshops, training courses, seminars, symposiums, conferences and exhibitions; vocational education services; design of educational and training programmes, courses, examinations and qualifications; production of video and audio cassettes for training and educational purposes; design and provision of aptitude and assessment tests; educational, instructional, coaching and training services relating to motivational, inspiration, teamwork and leadership matters; development of educational materials in the field of business and business training; dissemination of educational materials in the field of business and business training; electronic publishing; entertainment for training and educational purposes; sporting and cultural activities for training and educational purposes; information, advisory and consultancy services relating to the aforementioned services’.

14      On 27 May 2004, Pangyrus was re-entered in the register of companies, with Mr P as its sole director.

15      The Community trade mark application was published in Community Trade Marks Bulletin No 28/2004 of 12 July 2004. The mark applied for was registered on 4 February 2005 under No 3 337 979.

16      On 7 December 2007, Pangyrus filed an application with OHIM for a declaration that the mark in question was invalid in respect of all the goods and services for which it had been registered. The grounds of invalidity relied on in support of that application were those referred to in Article 51(1)(b) of Regulation No 40/94 (now Article 52(1)(b) of Regulation No 207/2009) and in Article 52(1)(c) of Regulation No 40/94 (now Article 53(1)(c) of Regulation No 207/2009), read in conjunction with Article 8(4) of Regulation No 40/94 (now Article 8(4) of Regulation No 207/2009). In support of that application, Pangyrus relied on the sign COLOURBLIND, used in the United Kingdom, among other countries, to designate a product consisting in an experimental learning toolbox.

17      By decision of 12 May 2009, the Cancellation Division upheld the application for a declaration of invalidity submitted by Pangyrus on the basis of Article 52(1)(b) of Regulation No 207/2009 and declared the contested trade mark to be invalid. The Cancellation Division found that there was a common understanding between Mr Cx and Mr P that the sign COLOURBLIND was the property of Pangyrus at the time when the application for registration of the contested trade mark was filed. The correspondence between the parties showed that, relying on that common understanding, Mr P had continued from September 2003 onwards to assert Pangyrus’ right to the sign COLOURBLIND. According to the Cancellation Division, the fact that, despite Mr Cx’s knowledge, RSVP Design chose to file the application for registration of the contested trade mark fell to be described as ‘dishonesty which would fall short of the standards of acceptable commercial behaviour’. It concluded that Mr Cx had acted in bad faith, and that this constituted conduct in bad faith on the part of RSVP Design for the purposes of Article 52(1)(b) of Regulation No 207/2009.

18      On 6 July 2009, RSVP Design filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Cancellation Division’s decision.

19      By decision of 23 March 2011 (‘the contested decision’), the Fourth Board of Appeal of OHIM annulled the Cancellation Division’s decision and dismissed the application for a declaration of invalidity in its entirety.

20      First, the Board of Appeal held that, since Pangyrus had not proved that it had used an earlier sign in the course of trade prior to the date of application for registration of the contested trade mark, the application for a declaration of invalidity had to be dismissed to the extent that it was based on Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) of that regulation.

21      Secondly, the Board of Appeal held that the application for a declaration of invalidity also had to be dismissed to the extent that it was based on Article 52(1)(b) of Regulation No 207/2009, as RSVP Design had not acted in bad faith when filing the application for registration of the contested trade mark. First of all, the Board of Appeal stated that it fell to Pangyrus to discharge the burden of proof in respect of the events in connection with which the allegation of bad faith was made. Next, after noting the lack of any precise legal definition for ‘bad faith’, the Board found that bad faith had to be demonstrated without subjective interpretation and that it could not be based on vague considerations and abstract concepts such as a ‘common understanding’ or the belief that ‘behaviour during an entire commercial relationship had given [Pangyrus] good reason to [regard itself as the owner of the sign COLOURBLIND]’. The Board observed that Pangyrus had not produced documents to prove that Mr Cx had transferred to it exclusive rights in the sign in question; nor had it provided documents from which such a transfer could have been objectively inferred.

 Forms of order sought

22      Pangyrus claims that the Court should:

–        annul the contested decision and reinstate the Cancellation Division’s decision;

–        order OHIM to pay the costs.

23      OHIM contends that the Court should:

–        dismiss the action;

–        order Pangyrus to pay the costs.

24      RSVP Design contends that the Court should:

–        dismiss the action;

–        order its costs to be reimbursed.

25      At the hearing, in response to a question from the Court, RSVP Design stated that its second head of claim had to be understood as asking the Court to order Pangyrus to pay the costs; a formal note to that effect was taken in the minutes of the hearing.

 Law

I –  Admissibility

26      RSVP Design contends that the action is inadmissible under Article 65(2) of Regulation No 207/2009. It argues that Pangyrus is asking the Court to substitute its own assessment of the evidence for that of the Board of Appeal, without having identified any errors committed by the Board. Accordingly, the review of the facts which Pangyrus is asking the Court to carry out is not justified.

27      At the hearing, in response to questions from the Court, Pangyrus and OHIM maintained in essence that Pangyrus’ action was admissible.

28      It should be borne in mind that, under Article 65(2) of Regulation No 207/2009, actions may be brought before the General Court against decisions of the Boards of Appeal of OHIM on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of Regulation No 207/2009 or of any rule of law relating to their application, or misuse of power (judgment of 5 July 2011 in Edwin v OHIM, C‑263/09 P, ECR, EU:C:2011:452, paragraph 52; see, by analogy, judgment of 20 October 2011 in PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, ECR, EU:C:2011:679, paragraph 66).

29      Accordingly, pursuant to Article 65(2) of Regulation No 207/2009, the General Court is called upon to assess the legality of the decisions of the Boards of Appeal by reviewing their application of EU law, having regard in particular to the facts which were submitted to them (judgment of 18 December 2008 in Les Éditions Albert René v OHIM, C‑16/06 P, ECR, EU:C:2008:739, paragraph 38, and order of 28 March 2011 in Herhof v OHIM, C‑418/10 P, EU:C:2011:187, paragraph 47).

30      In particular, the General Court can carry out a full review of the legality of the decisions of OHIM’s Boards of Appeal, if necessary examining whether those boards have made a correct legal classification of the facts of the dispute or whether their assessment of the facts submitted to them was flawed (judgment in Les Éditions Albert René v OHIM, paragraph 29 above, EU:C:2008:739, paragraph 39, and order in Herhof v OHIM, paragraph 29 above, EU:C:2011:187, paragraph 48).

31      Where it is called upon to assess the legality of a decision of a Board of Appeal of OHIM, the General Court cannot be bound by an incorrect assessment of the facts by that Board, since that assessment is part of the findings whose legality is being disputed before the General Court (judgment in Les Éditions Albert René v OHIM, paragraph 29 above, EU:C:2008:739, paragraph 48).

32      In the present case, Pangyrus raises two pleas in law in support of its action. By its first plea, it alleges, in essence, infringement of Article 52(1)(b) of Regulation No 207/2009 and submits that the Board of Appeal erred in law in finding that RSVP Design had not acted in bad faith when filing the application for registration of the contested trade mark. In that regard, Pangyrus contests the Board of Appeal’s assessment of the evidence produced by Pangyrus in order to demonstrate RSVP Design’s bad faith.

33      By its second plea, Pangyrus alleges, in essence, infringement of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) of that regulation, and submits that the Board of Appeal erred in law in finding that Pangyrus had not proved that it had used an earlier sign in the course of trade prior to the date of application for registration of the contested trade mark. In that regard, Pangyrus contests the Board of Appeal’s assessment of the evidence produced by Pangyrus in order to demonstrate that, under UK law, it had unregistered rights to prevent the contested trade mark from being registered.

34      Consequently, in the light of the case-law cited in paragraphs 28 to 31 above, the General Court has jurisdiction to review the Board of Appeal’s assessment of the evidence produced by Pangyrus as mentioned in paragraphs 32 and 33 above and the present action is accordingly admissible.

II –  Substance

35      In support of its action, Pangyrus raises the two pleas in law mentioned above. The Court considers it appropriate to begin by examining the second plea in law.

A –  Second plea in law: infringement of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) of that regulation

36      Pangyrus submits that the Board of Appeal was wrong in finding that Pangyrus had not proved that it had used an earlier sign in the course of trade prior to the date of application for registration of the contested trade mark.

37      OHIM and RSVP Design contest the merits of Pangyrus’ arguments.

38      Under Article 53(1)(c) of Regulation No 207/2009, a Community trade mark is to be declared invalid on application to OHIM where there is an earlier right as referred to in Article 8(4) of that regulation and the conditions set out in that provision are fulfilled. It should be borne in mind that, pursuant to those two provisions, the proprietor of a sign other than a trade mark may oppose the registration of a Community trade mark if the sign satisfies the four following cumulative conditions: it must be used in the course of trade in a sufficiently significant manner; it must be of more than mere local significance; the right to that sign must have been acquired in accordance with the law of the Member State in which the sign was used prior to the date of application for registration of the Community trade mark; and, lastly, the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Accordingly, if a sign does not satisfy one of those conditions, an application for a declaration of invalidity based on the existence of a sign other than a trade mark used in the course of trade pursuant to Article 8(4) of Regulation No 207/2009 cannot succeed (judgments of 29 March 2011 in Anheuser-Busch v Budějovický Budvar, C‑96/09 P, ECR, EU:C:2011:189, paragraph 159, and 24 March 2009 in Moreira da Fonseca v OHIM — General Óptica (GENERAL OPTICA), T‑318/06 to T‑321/06, ECR, EU:T:2009:77, paragraphs 32 and 47).

39      As regards the first two conditions, account must be taken of the duration and intensity of the use of that sign as a distinctive element vis-à-vis its addressees, namely purchasers and consumers as well as suppliers and business rivals. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance (judgment in Anheuser-Busch v Budějovický Budvar, paragraph 38 above, EU:C:2011:189, paragraph 160).

40      It is in the light of those considerations that the merits of the present plea must be examined.

41      In paragraph 21 of the contested decision, the Board of Appeal found that Pangyrus had not substantiated its application for a declaration of invalidity, since it had failed to prove that it had used an earlier sign in the course of trade prior to the date on which the contested trade mark had been applied for.

42      First, in paragraph 19 of that decision, the Board of Appeal explained that only the owner of the unregistered right purported could apply for a declaration of invalidity of the contested trade mark and that only the natural or legal person who had used the sign relied on could acquire the rights referred to in Article 8(4) of Regulation No 207/2009. Secondly, the Board found that, of the evidence produced by Pangyrus, only two invoices from 1998 referred to that company as a seller of COLOURBLIND products. According to the Board of Appeal, the other invoices produced by Pangyrus showed that Future Factory was the supplier of those products, since seven of those invoices emanated from Future Factory and, although the company name had been blanked out or omitted from the other invoices, the value added tax registration number on those invoices was identical to Future Factory’s number. Thirdly, the Board of Appeal held that Pangyrus had not proved that it had granted Future Factory an implied licence so as to allow the latter to make use of the intellectual property rights in the sign in question.

43      Pangyrus submits that the essential requirements for applying Article 8(4) of Regulation No 207/2009 under UK law, that is to say, ‘passing off’, were met and that it had adduced evidence to show that it had unregistered rights to prevent registration of the contested trade mark.

44      In that regard, to the extent that Pangyrus must be understood to be relying, in support of its application for a declaration of invalidity, on the concept of ‘passing off’ provided for under UK law, it should be borne in mind that the applicable legislation, in the present case, is the United Kingdom Trade Marks Act 1994, Section 5(4) of which provides, inter alia:

‘A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented:

(a)      by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade ...’

45      According to the case-law of the General Court based on the interpretation of that provision by the national courts, it follows that the applicant for a declaration of invalidity must establish, in accordance with the legal rules governing actions for passing off laid down by the laws of the United Kingdom, that three conditions are satisfied: the goodwill (that is to say, the attractive force which brings in custom) acquired; misrepresentation; and damage caused to that goodwill (see, to that effect, judgments of 9 December 2010 in Tresplain Investments v OHIM — Hoo Hing (Golden Elephant Brand), T‑303/08, ECR, EU:T:2010:505, paragraphs 93 and 101, and 18 January 2012 in Tilda Riceland Private v OHIM — Siam Grains (BASmALI), T‑304/09, ECR, EU:T:2012:13, paragraph 19).

46      Regarding the last two conditions for an action for passing off, it should be observed that Pangyrus refers in a general manner, in paragraphs 54 and 55 of its application, to its statement of 20 June 2008 as submitted to OHIM.

47      Settled case-law has established that, in order to ensure legal certainty and the proper administration of justice, it is necessary, if an action is to be admissible, for the essential matters of law and fact relied on to be stated, at least in summary form, coherently and intelligibly in the application itself. In that regard, although the body of the application may be supported and supplemented on specific points by references to extracts from documents annexed thereto, a general reference to other documents, even those annexed to the application, cannot make up for the absence of the essential arguments in law which, in accordance with the relevant provisions, must appear in the application. Accordingly, to the extent that the applicant makes no specific reference to particular paragraphs of its written submissions in which the arguments put forward in the proceedings before OHIM are set out, the general references to those written submissions must be declared inadmissible (see, to that effect, judgments of 12 July 2012 in Winzer Pharma v OHIM — Alcon (BAÑOFTAL), T‑346/09, EU:T:2012:368, paragraph 43 and the case-law cited, and 13 December 2012 in pelicantravel.com v OHIM — Pelikan (Pelikan), T‑136/11, EU:T:2012:689, paragraph 17).

48      In addition, regarding the first condition for an action for passing off, which relates to the goodwill acquired, Pangyrus claims that it owned the sign COLOURBLIND and that, under an implied licence granted by Pangyrus, Future Factory dispatched COLOURBLIND products from 1996 onwards throughout the United Kingdom and to numerous other countries. The goodwill generated by Future Factory can be seen from that company’s business plan of 19 May 2000 (‘Future Factory’s business plan’) and from a brochure entitled ‘Future Factory — Turning the Learning Curve Full Circle’ (‘Future Factory’s brochure’).

49      It should be noted that Pangyrus’ argument that, by virtue of the passing off law applicable in the United Kingdom, it has rights which enable it to prohibit the use of a subsequent trade mark more specifically concerns the third and fourth conditions mentioned in paragraph 38 above, whereas in paragraph 19 of the contested decision the Board of Appeal examined the condition relating to a use of the sign in the course of trade. In any event, in order to be able validly to rely, in the circumstances, on Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) of that regulation, Pangyrus had to show that it had made use of the sign concerned in the course of trade prior to the date of application for registration of the contested trade mark — as the Board of Appeal rightly held, in essence, in paragraph 19 of the contested decision — and to demonstrate that such use had been sufficiently significant, that being a condition common to Article 8(4) of Regulation No 207/2009 and to the rules governing an action for passing off applicable in the United Kingdom.

50      According to the case-law of the General Court, in order for a natural or legal person, relying on the national case-law relating to the law of passing off applicable in the United Kingdom, to be regarded as the ‘proprietor of an earlier right’ able to prevent the use of a trade mark as the result of rights acquired over a sign, that person must demonstrate a use of that sign. The person must therefore, in order to establish the goodwill, demonstrate commercial trading consisting in the sale of a product or a service under the sign concerned and above a de minimis threshold (see, to that effect, judgments in Golden Elephant Brand, paragraph 45 above, EU:T:2010:505, paragraphs 101 to 122, and BASmALI, paragraph 45 above, EU:T:2012:13, paragraph 26).

51      Regarding the proof of a sufficiently significant use of the sign COLOURBLIND, Pangyrus asserts that numerous invoices proved the sale of the COLOURBLIND product by itself and by Future Factory.

52      It must be stated, however, that — as the Board of Appeal mentioned in paragraph 19 of the contested decision — the only items of evidence provided by Pangyrus showing that it had marketed the COLOURBLIND product were two invoices, dated 20 February and 20 June 1998 respectively, each of which concerned the sale of seven units of that product. Pangyrus does not dispute the fact that the other invoices produced emanated from Future Factory.

53      Although Pangyrus claims to have granted Future Factory an implied licence, it is sufficient to state in that regard that — as RSVP Design rightly contends — the precise subject of the supposed licence is not known. In any event, Pangyrus does not substantiate its assertion in any way, despite the fact that, in response to an identical assertion put forward during the proceedings before OHIM, the Board of Appeal had objected to the lack of any evidence regarding the existence of such a licence (paragraph 19 of the contested decision).

54      It follows that the two invoices issued by Pangyrus concerning the sale, in total, of 14 COLOURBLIND products do not prove a sufficiently significant use of the sign COLOURBLIND in the course of trade by that company.

55      In addition, Pangyrus claims — without providing further details — that the goodwill generated was clear from Future Factory’s business plan and Future Factory’s brochure. As it is, the business plan, dated 19 May 2000, does not concern Pangyrus; nor does it mention the sign COLOURBLIND. The — undated — brochure relied on does indeed mention a COLOURBLIND product, but makes no reference to Pangyrus. Accordingly, those documents cannot prove the existence of goodwill acquired by Pangyrus in connection with the sign COLOURBLIND. Furthermore, in stating that Future Factory had built up goodwill in connection with that sign, Pangyrus admits that, were it to be established that goodwill had been built up, such goodwill was not of its making.

56      Consequently, contrary to the assertions made by Pangyrus, the Board of Appeal did not err in finding, in paragraph 21 of the contested decision, that Pangyrus had failed to prove that, prior to the date of application for registration of the contested trade mark, it had used an earlier sign in the course of trade.

57      It follows from the foregoing that, as the conditions set out in Article 8(4) of Regulation No 207/2009 are cumulative, the Board of Appeal was right to conclude that the application for a declaration of invalidity had to be dismissed to the extent that it was based on Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) of that regulation.

58      The second plea in law must therefore be rejected.

B –  First plea in law: infringement of Article 52(1)(b) of Regulation No 207/2009

59      After addressing the issue of how to define bad faith, Pangyrus claims to have adduced evidence that RSVP Design acted in bad faith when filing the application for registration of the contested trade mark, and challenges the assessment made by the Board of Appeal in that regard.

60      OHIM and RSVP Design dispute Pangyrus’ arguments.

61      In paragraph 24 of the contested decision, the Board of Appeal noted that there was no precise legal definition for the expression ‘bad faith’, which accommodated several possible meanings. The Board took the view that bad faith was based on the subjective intentions of the person applying for the Community trade mark when filing the application for registration, which were often described in case-law as dishonest. The Board explained that, in order for there to be a finding of bad faith on the part of the proprietor of the Community trade mark, it was also necessary for actions to have been taken by that proprietor which clearly showed a dishonest intention and, in addition, it was necessary that there be an objective standard against which such actions could be measured before being characterised as indicating bad faith.

62      It should be noted first of all that the Community trade mark system is based on the principle, laid down in Article 8(2) of Regulation No 207/2009, that an exclusive right is conferred upon the person who is first to file. In accordance with that principle, a mark may be registered as a Community trade mark only in so far as this is not precluded by an earlier mark, whether a Community trade mark, a trade mark registered in a Member State or by the Benelux Office for Intellectual Property, a trade mark registered under international arrangements which have effect in a Member State, or a trade mark registered under international arrangements which have effect in the European Union. On the other hand, the mere fact that an unregistered mark is used by a third party does not preclude an identical or similar mark from being registered as a Community trade mark for identical or similar goods or services (judgment of 14 February 2012 in Peeters Landbouwmachines v OHIM — Fors MW (BIGAB), T‑33/11, ECR, EU:T:2012:77, paragraph 16; see also judgment of 11 July 2013 in SA.PAR. v OHIM — Salini Costruttori (GRUPPO SALINI), T‑321/10, ECR, EU:T:2013:372, paragraph 17 and the case-law cited).

63      The application of that principle is qualified, inter alia, by Article 52(1)(b) of Regulation No 207/2009, under which, following an application to OHIM or on the basis of a counterclaim in infringement proceedings, a Community trade mark is to be declared invalid where the applicant for registration was acting in bad faith when it filed the application for registration of the trade mark. Where the applicant for a declaration of invalidity seeks to rely on that ground, it is for that party to prove the circumstances which substantiate a finding that the Community trade mark proprietor was acting in bad faith when it filed the application for registration of that mark (judgment in BIGAB, paragraph 62 above, EU:T:2012:77, paragraph 17; see also judgment in GRUPPO SALINI, paragraph 62 above, EU:T:2013:372, paragraph 18 and the case-law cited).

64      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 (judgment of 1 February 2012 in Carrols v OHIM — Gambettola (Pollo Tropical CHICKEN ON THE GRILL), T‑291/09, ECR, EU:T:2012:39, paragraph 44).

65      It must be observed, as stated by OHIM and RSVP Design, that, in its judgment of 11 June 2009 in Chocoladefabriken Lindt & Sprüngli (C‑529/07, ‘judgment in Lindt Goldhase’, ECR, EU:C:2009:361, paragraph 53), the Court of Justice provided some clarification regarding the way in which the concept of bad faith, as referred to in Article 52(1)(b) of Regulation No 207/2009, should be understood.

66      According to the Court, in order to determine whether the applicant for registration is acting in bad faith for the purposes of Article 52(1)(b) of Regulation No 207/2009, account must be taken of all the relevant factors specific to the particular case which obtained at the time of filing the application for registration of a sign as a Community trade mark, in particular: (i) the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product or service capable of being confused with the sign for which registration is sought; (ii) the applicant’s intention to prevent that third party from continuing to use such a sign; and (iii) the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought (judgment in Lindt Goldhase, paragraph 65 above, EU:C:2009:361, paragraph 53).

67      That being so, it is apparent from the wording used by the Court in that judgment that the factors listed are only examples drawn from a number of factors which can be taken into account in order to decide whether the applicant for registration was acting in bad faith at the time when the trade mark application was filed (judgments in BIGAB, paragraph 62 above, EU:T:2012:77, paragraph 20; Pelikan, paragraph 47 above, EU:T:2012:689, paragraph 26; and GRUPPO SALINI, paragraph 62 above, EU:T:2013:372, paragraph 22).

68      It must therefore be held 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 contested sign and its use since its creation, the commercial logic underlying the filing of the application for registration of that sign as a Community trade mark, and the chronology of events leading up to that filing (see, to that effect, judgments in BIGAB, paragraph 62 above, EU:T:2012:77, paragraph 21, and GRUPPO SALINI, paragraph 62 above, EU:T:2013:372, paragraph 30).

69      It is in the light of the foregoing considerations, in so far as they apply to the present case, that the legality of the contested decision must be reviewed, in that the Board of Appeal concluded that there was no bad faith on the part of Mr Cx or, by extension, on the part of RSVP Design, at the time when the application for registration of the contested trade mark was filed.

1.     Determination of the relevant time, the burden of proof and whether the alleged bad faith on the part of Mr Cx can be imputed to RSVP Design

70      It must be held that, as can be seen from paragraph 35 of the judgment in Lindt Goldhase, paragraph 65 above (EU:C:2009:361), and as the Board of Appeal rightly observed in paragraph 22 of the contested decision without being challenged by Pangyrus on that point, any alleged bad faith on the part of RSVP Design had to be demonstrated by reference to the time when the application for registration of the Community trade mark was filed, that is to say, 3 September 2003 (‘the relevant time’).

71      Moreover, Pangyrus does not dispute that the burden of proof in respect of RSVP Design’s alleged bad faith lay with Pangyrus itself, as indicated by the Board of Appeal in paragraph 23 of the contested decision.

72      Furthermore, it must be pointed out that the parties agree on the fact that, as the Board of Appeal implicitly found, bad faith on the part of Mr Cx could constitute bad faith on the part of RSVP Design, in so far as he had created that company and was one of its directors at the relevant time.

2.     The origin of the sign in question and Mr Cx’s knowledge regarding its existence and use

73      It is not disputed that the sign COLOURBLIND, relied on by Pangyrus in support of its application for a declaration of invalidity, was invented by Mr Cx in 1991, as noted by the Board of Appeal in paragraph 25 of the contested decision.

74      Nor is it disputed that, at the relevant time, Mr Cx was aware of the use of an identical sign for an identical or similar product.

75      Indeed, it is common ground that, having created the sign COLOURBLIND, Mr Cx used it until he set up Pangyrus in 1993. As regards the use of the sign thereafter, although Pangyrus claims to have marketed the COLOURBLIND product from 1993 until the date on which it brought the present action, it adduced, as evidence of its purported use of the sign, only two invoices, each connected with the sale by that company of seven units of the product in question (see paragraph 52 above). Moreover, it should be noted that Pangyrus stated in response to a written question from the Court that it ‘[had] essentially ceased trading at the point of the merger [with Cordyn Group] in 1998’. In addition, it is clear from the case-file (see paragraph 52 above) and the application that, from November 1996 onwards, the sign COLOURBLIND was used during sales of products by Future Factory and, following the 1998 transfer, only during such sales, which is not contested by OHIM or RSVP Design.

76      In any event, as Mr Cx created the sign COLOURBLIND in 1991 and owing to the fact that he was a shareholder of Pangyrus and Future Factory, and then of Cordyn Group after the 1998 transfer, and by dint of his posts at Pangyrus and Future Factory before his resignation from both companies in 2003 (see paragraphs 1 to 4 above), he was closely and continuously involved, from 1991 until 2003, in activities leading to the use of that sign and was necessarily aware of that use: he may thus be regarded as ‘well informed’ as to the use of that sign during that period.

77      Nonetheless, it should be borne in mind that such awareness on the part of Mr Cx is not sufficient, in itself, to establish that he acted in bad faith: consideration must also be given to his intention at the time when the application for registration was filed (see, to that effect, judgments in Lindt Goldhase, paragraph 65 above, EU:C:2009:361, paragraphs 40 and 41, and GRUPPO SALINI, paragraph 62 above, EU:T:2013:372, paragraph 26).

3.     Mr Cx’s intention

78      It should be borne in mind that, according to case-law, the intention of the person applying for the trade mark at the relevant time is a subjective factor which must be determined by reference to the objective circumstances of the particular case (judgment in Lindt Goldhase, paragraph 65 above, EU:C:2009:361, paragraph 42).

79      In the circumstances, the idea that Mr Cx intended that the contested trade mark should not be used must be dismissed. Pangyrus makes no claim that such an intention ever existed; nor, moreover, has it produced any evidence to show, or from which it could be inferred, that the trade mark application was artificial and made no commercial sense. Moreover, it is common ground that RSVP Design used the contested trade mark after its registration.

80      However, it is necessary to determine whether — as is claimed by Pangyrus — Mr Cx’s aim in filing the application for registration of the contested trade mark was to ‘lay his hands’ on the trade mark of a third party with whom he had had contractual or pre-contractual relations and whether the application was clearly intended to prevent Pangyrus and Mr P from making any further commercial use of that trade mark.

81      First of all, it must be found that, owing to the connections between Mr Cx and Pangyrus (see paragraph 76 above), that company cannot be described as a third party in relation to Mr Cx, as OHIM correctly contends.

82      Next, it should be noted that the issue in dispute between the parties concerns the implications of the direct relationship between Pangyrus and Mr Cx for the purposes of determining whether the latter acted in bad faith. According to Pangyrus, the relevant question is whether the conduct of the proprietor of the contested trade mark, at the relevant time, constituted conduct in bad faith. In that context, although Pangyrus argues that it was not for the Board of Appeal to determine, under national law, who had the rights in the sign COLOURBLIND, its line of argument is essentially that, owing to the connections between Mr Cx and itself, there was a common understanding that Pangyrus owned the rights in the sign and that, consequently, Mr Cx’s aim was to take over the ownership of that sign.

83      OHIM and RSVP Design oppose that line of argument.

84      In paragraphs 25 to 28 of the contested decision, the Board of Appeal examined the provisions of the 1998 agreement, the possible rights acquired by Pangyrus as a result of its use of the sign in question, a letter addressed to the national tax authorities, and a business plan. In paragraphs 29 and 30 of that decision, the Board found that bad faith could not be based on vague considerations or abstract concepts such as a common understanding or the belief that an entire commercial relationship had given Pangyrus good reason to regard itself as the owner of the sign in question. It observed that Pangyrus had not produced any documents proving that Mr Cx had transferred to it his exclusive rights in that sign; nor had it produced any documents from which such a transfer could have been objectively inferred. The Board also observed that Pangyrus had been unable to demonstrate that it had better rights in the sign than those held by RSVP Design.

a)     No right based on the use, on Pangyrus’ behalf, of the sign in question

85      According to Pangyrus, the Board of Appeal was wrong to conclude that there was no right in Pangyrus’ favour based on the use of the sign COLOURBLIND (paragraph 26 of the contested decision). At the date on which the contested trade mark was registered, RSVP Design was clearly aware that the goodwill connected with that sign had been built up exclusively by Pangyrus and, from 1998 onwards, by Future Factory. According to Pangyrus, the invoices which it produced proved its use of that sign prior to the conclusion of the 1998 agreement.

86      It should be noted that the above line of argument put forward by Pangyrus has already been rejected in the context of the examination of the second plea in law: Pangyrus was unable to demonstrate that it had a right based on the use of the sign for the purposes of Article 8(4) of Regulation No 207/2009 (see paragraphs 43 to 56 above).

b)     No proof of the transfer to Pangyrus of intellectual property rights in the sign in question

87      Pangyrus submits that, in paragraph 26 of the contested decision, the Board of Appeal incorrectly found that Pangyrus was unable to refute RSVP Design’s assertion that Mr Cx had not, at any time, transferred intellectual property rights in the sign in question to Pangyrus. In that regard, Pangyrus argues that, despite the fact that no document exists concerning a transfer to it of Mr Cx’s rights and assuming that such a document is necessary, there is a body of evidence, adduced in the proceedings before OHIM, which demonstrates, consistently with the common understanding between the parties, that Pangyrus owned the rights in the sign in question. Pangyrus claims that the Board of Appeal refused to take all the relevant and significant considerations into account. In that regard, Pangyrus relies on various documents establishing the transfer to it of intellectual property rights in the sign in question, as well as bad faith on the part of Mr Cx.

88      It should be noted that the documents relied on by Pangyrus were produced during the proceedings before OHIM. It is necessary to begin by examining the documents which were assessed by the Board of Appeal in the contested decision. It is then necessary to examine those which were not so assessed, in order to ascertain whether the Board of Appeal failed to take into account considerations relevant for the purposes of determining whether there was bad faith on the part of RSVP Design.

 Documents relied on by Pangyrus and examined in the contested decision

–       The 1998 agreement

89      Pangyrus relies on the 1998 agreement, produced in response to a written question from the Court, which concerned the sale of shares in Pangyrus — shares held by Mr Cx, among others — to Cordyn Group.

90      In paragraph 25 of the contested decision, the Board of Appeal found that: (i) the 1998 agreement constituted no more than a purchase of shares in a company; (ii) the references to ‘Warranties’ and intellectual property were vague; and (iii) there was no mention of the sign in question in that agreement. The Board concluded, in essence, that the agreement meant only that a third party — one not related to the parties to the proceedings — had acquired the shares in Pangyrus belonging to Mr Cx, which was of no importance for the purposes of determining whether Mr Cx had acted in bad faith.

91      It must be stated that, although Pangyrus relies on the 1998 agreement — in particular, Clause 10 of Part 4 thereof, which relates to warranties — claiming that that clause specifically referred to intellectual property rights and that it was confirmation of a transfer, by Mr Cx to Pangyrus, of ownership of the sign in question, the parties disagree as to the meaning of that clause.

92      In its response to a written question from the Court, Pangyrus asserted that ‘[t]he natural reading of [Clause 10 of Part 4 of the 1998 agreement] [was] that [Pangyrus] owned the intellectual property used by it’. Pangyrus noted that, under Clause 10.1 of Part 4 of that agreement, ‘[a]ll Intellectual Property [Rights were] vested in [Pangyrus] and beneficially owned by [that company]’ and that, under Clause 10.2 of that part, ‘[it was] the sole beneficial owner of the Intellectual Property’. Pangyrus stated that it was therefore of the view that the wording of Clause 10 of Part 4 of the 1998 agreement was very broad and did not preclude Pangyrus from holding legal title to the intellectual property rights in question. It also observed that the agreement in no way stated that Pangyrus did not have legal title to the intellectual property or that it did not ‘own’ that property.

93      In that regard, it must be held that the mere fact that the 1998 agreement did not state that Pangyrus had no legal title to the intellectual property does not support the inference that Pangyrus held legal title to that intellectual property or that it was the proprietor of the intellectual property rights.

94      Moreover, it must be observed that — as OHIM noted — Clause 10 of Part 4 of the 1998 agreement stated that Pangyrus was the sole beneficial owner of the rights mentioned above, subject to the rights in respect of which registration was possible and in respect of which Pangyrus had been registered as sole ‘proprietor’.

95      In response to the written questions from the Court and to its questions during the hearing, Pangyrus and RSVP Design indicated that, under Clause 11 thereof, the 1998 agreement was subject to Scots law, which — unlike English law — does not recognise the concept of ‘beneficial ownership’. Pangyrus therefore argued at the hearing that, if Clause 10 of Part 4 of the 1998 agreement were to be given legal force, it was necessary to interpret it in such a way as to give effect to the intentions of the parties involved. Pangyrus inferred from this, in essence, that, since it was the beneficial owner of the sign in question, the legal owner of that sign could not register the sign without acting in bad faith, because such an action would deprive Pangyrus of the benefit that it derived from the unregistered sign.

96      It must be found that, in so doing, Pangyrus acknowledged that, contrary to its line of argument in the application, Clause 10 of Part 4 of the 1998 agreement did not necessarily mean that it owned the intellectual property rights, particularly the rights over the sign in question. It must also be found that, assuming it to be established that the sign in question was indeed covered by the 1998 agreement, all that was mentioned in that clause with regard to Pangyrus was its being beneficial owner of rights in that sign, not that Pangyrus had legal title to those rights. Furthermore, the fact that it was stated that Pangyrus was the beneficial owner of rights in that sign, and not that it had legal title thereto, lends force to the arguments adduced by OHIM and RSVP Design to the effect that Mr Cx considers that he never transferred any title to that sign.

97      It follows from the foregoing that it cannot be objectively inferred from Clause 10 of Part 4 of the 1998 agreement that the rights in the intellectual property used by Pangyrus were also owned by that company, in the sense that it had legal title thereto, particularly as regards the sign COLOURBLIND.

98      In addition to that clause, Pangyrus relies on the fact that, under the terms of the 1998 agreement, it was not party to any contract which could be, or could have been, important for its activities. According to Pangyrus, if Mr Cx had retained rights in the sign in question at the time of that agreement, there should have been a contract or a licence (explicit or implied), agreed between Mr Cx and itself. Accordingly, that statement in the 1998 agreement confirms that Pangyrus was the owner of the sign in question and used it as such, which in turn confirms bad faith on the part of Mr Cx.

99      In that regard, assuming that the 1998 agreement covered the sign COLOURBLIND, it must be held, first, as the Board of Appeal correctly held in paragraph 28 of the contested decision, that the lack of a licence granted to Pangyrus by Mr Cx could not be construed as the implicit acceptance of a transfer of ownership of that sign to that company. Secondly, if there was an agreement between Mr Cx and Pangyrus concerning the use of that sign, it is possible that, owing to its implied or informal nature, it was not mentioned in the 1998 agreement.

100    In any event, it is important to note that Pangyrus relied on the existence of an implied agreement with Future Factory in order to explain that, although it was the owner of the sign COLOURBLIND, it was Future Factory which made use of that sign (see paragraphs 48 and 53 above). However, applying the line of argument used by Pangyrus as set out in paragraph 98 above, an implied agreement of that kind should then have been mentioned in the 1998 agreement. It follows that Pangyrus necessarily acknowledges that an implied or informal agreement could have existed concerning the use of the sign in question, but without appearing in the 1998 agreement.

101    Lastly, as the Board of Appeal indicated in paragraph 25 of the contested decision, it should be observed that Clause 10 of Part 4 of the 1998 agreement made no mention of the sign in question or of any other sign, since it contained only a very general definition of the intellectual property covered. It must, moreover, be noted that, in its response to the written question from the Court focusing on the meaning of that clause and the nature and extent of the rights held by Pangyrus under Clause 10.2 of Part 4 of the 1998 agreement, Pangyrus systematically added a reference to the sign COLOURBLIND, which does not appear in those provisions. It is true that the 1998 agreement contained a definition of the intellectual property involved, but it was vague and made no mention of the sign in question, as the Board of Appeal noted in paragraph 25 of the contested decision and as RSVP Design rightly contends.

102    Accordingly, contrary to Pangyrus’ assertions, it does not follow from the 1998 agreement — in particular, from Clause 10 of Part 4 thereof — that there was objective evidence enabling it to be concluded that Pangyrus was the owner of the sign COLOURBLIND.

–       The letter to the national tax authorities of 9 July 1998

103    Pangyrus relies on a letter addressed to the national tax authorities and emphasises that, according to that letter, it ‘[was] a company established to provide inventions and ideas to [Future Factory]’ which ‘[acted] as the patent holder and product developer/producer for various management training products’. Accordingly, Pangyrus argues, that letter supports a finding that Mr Cx acted in bad faith.

104    That argument must be rejected. It must be observed that, while that letter, which describes plans to set up a new company, bears the name of its sender, it is not possible to ascertain in what capacity that person sent it to the national tax authorities. Nor does Pangyrus explain how that letter establishes the transfer of rights in the sign in question to Pangyrus or how it shows that Mr Cx acted in bad faith.

105    In any event, it is sufficient to state that, as the Board of Appeal correctly noted in paragraph 27 of the contested decision, that letter mentions only the fact that Pangyrus was a patent holder; it contains no information whatsoever regarding the sign in question.

–       Future Factory’s business plan of 19 May 2000

106    Pangyrus claims that Future Factory’s business plan contained the following statement: ‘the current boxed learning products are the current manifestation of our intellectual property rights (IPR)’ (‘our’ was underlined by Pangyrus). That wording, according to Pangyrus, supports a finding that Mr Cx acted in bad faith.

107    That argument must be rejected. The statement cited by Pangyrus, used in the document in question and mentioned in paragraph 28 of the contested decision, is very general and does not refer to any specific intellectual property right, or even — as RSVP Design rightly contends — to a specific product. Consequently, no information concerning Pangyrus’ rights in the sign in question can be inferred from that document.

 Documents relied on by Pangyrus and not examined by the Board of Appeal

–       A document of June 2002 relating to Future Factory’s communication activities

108    Pangyrus argues that a document relating to Future Factory’s communication activities also helps to establish the existence of bad faith on the part of Mr Cx.

109    Nevertheless, since Pangyrus does not specify how that document establishes that it owned the sign in question or how it shows that Mr Cx acted in bad faith, its argument cannot succeed. In any event, it should be noted that the document in question describes a COLOURBLIND product which is available in the form of an activity box, which confirms that Future Factory was offering a product with that name at that time. However, that document does not mention Pangyrus in any way; nor does it provide any information regarding the rights in the sign in question.

–       Future Factory’s brochure

110    Pangyrus argues that the allegation that Mr Cx acted in bad faith is borne out by Future Factory’s brochure.

111    However, since Pangyrus does not specify how that brochure establishes the fact that it owned the sign in question or how it shows that Mr Cx acted in bad faith, its argument must be rejected. In any event, it should be noted that, although Mr Cx’s name appears on that — undated — document as Creative Director and the document mentions a COLOURBLIND product, it makes no reference to either Pangyrus or the rights in the sign in question.

–       The attempt of 2 August 2003 to purchase the range of products, and Mr P’s letter of 12 September 2003

112    Pangyrus claims that Mr Cx attempted to purchase the range of products prior to the relevant time, which demonstrates his bad faith. In its view, the aim of the business offer of 2 August 2003 made by Newco to Future Factory was to purchase the existing range of products, as Newco preferred not to compete with Future Factory for sales of existing tools, such as the COLOURBLIND product. Pangyrus argues that, if COLOURBLIND had been Mr Cx’s property, he would have had no reason for offering to purchase the product.

113    First, it should be noted that the offer was made, not by Mr Cx, but by Mr Ck. Secondly, it was explained in that offer that ‘[t]he current range of [F]uture [F]actory products [was] not protected’, which means, if it is assumed that the COLOURBLIND product was part of that range, that Mr Ck considered that there was no right protecting the sign in question. Lastly, it must be pointed out that the offer was made to Future Factory and not to Pangyrus. Accordingly, the document containing that business offer does not provide any specific information as regards the rights in the sign in question and it cannot be inferred from that document that Pangyrus owned the rights in that sign.

114    That conclusion is not undermined by Pangyrus’ argument that the offer is confirmed by Mr P’s letter of 12 September 2003 because it establishes the offer by Ms A, Mr Ck and Mr Cx to purchase the range of products, including the COLOURBLIND product.

115    It should be stated first, that Mr P’s letter postdates the relevant time; next, that it is addressed to Mr Ck; and lastly, that paragraph 2 of the letter mentions Mr Ck’s offer to Future Factory, without making any mention of Mr Cx or Ms A in that regard. Therefore, assuming that the content of that — unsigned — letter can be regarded as sufficiently reliable, it merely confirms that an offer was made by Mr Ck to Future Factory concerning the purchase of a range of products (the existence of that offer not being contested by RSVP Design) and indicates that Mr P refused that offer.

–       The letter of 24 April 2006 addressed to Mr G

116    Pangyrus submits that the letter addressed to Mr G by Ms A, Mr Ck and Mr Cx also helps to demonstrate bad faith on the part of Mr Cx.

117    That argument must be rejected. It should be noted that, in that letter, Ms A, Mr Ck and Mr Cx indicated that it was unlikely that their departure from Future Factory would have an impact on that company’s revenue from the sale of physical goods. It was also explained that the future revenue potential of the ‘product’ and other intangible assets remaining with Future Factory and Cordyn Group was not reduced by the ‘leavers’ (Ms A, Mr Ck and Mr Cx). Pangyrus does not explain why that letter, which dates from 2006 and makes no mention of the sign in question, constitutes evidence establishing that Pangyrus owned the sign in question and that Mr Cx acted in bad faith.

–       The statements made by Mr G, Mr M and Mr P, dated 17, 19 and 20 June 2008 respectively

118    Pangyrus relies on various statements, which — in its view — corroborate the evidence examined previously (see paragraphs 87 to 117 above) and support its arguments concerning Mr Cx’s bad faith.

119    It should be stated that, as Pangyrus does not specify the way in which those statements help to provide proof of a transfer of the intellectual property rights in the sign in question to Pangyrus or of Mr Cx’s bad faith, its arguments in that regard must be rejected.

120    In any event, the content of those statements does not permit the assertion, or the inference, that the rights in the sign in question were transferred by Mr Cx to Pangyrus.

121    It should be borne in mind that, assuming that those statements are to be regarded as forming part of the body of evidence envisaged by Article 78(1)(f) of Regulation No 207/2009, it is settled case-law that, in order to assess the probative value of ‘statements in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up’, it is necessary to check the plausibility and truthfulness of the information they contain, taking account, in particular, of the origin of each document, the circumstances in which it came into being, the addressee and whether that document appears from its content to be sound and reliable (see, to that effect, judgments of 7 June 2005 in Lidl Stiftung v OHIM — REWE-Zentral (Salvita), T‑303/03, ECR, EU:T:2005:200, paragraph 42, and 23 September 2009 in Cohausz v OHIM — Izquierdo Faces (acopat), T‑409/07, EU:T:2009:354, paragraph 49).

122    First, as regards Mr G’s statement, it can in no way be inferred from that document that the rights in the sign in question were transferred at any time to Pangyrus by Mr Cx, since that statement, drafted by a chartered accountant who intervened following a failure to reach an agreement concerning the price of shares in Cordyn Group in 2008, contains no assertions or references regarding a product or a sign.

123    Secondly, as regards Mr M’s statement, Mr M claims to have advised Mr P ‘[i]n or around 1998’ regarding the 1998 transfer, without indicating in more detail in what capacity he drafted that statement. Moreover, that document provides no specific information as regards the rights in the sign in question.

124    Thirdly, as regards Mr P’s statement, it should be held that, as that statement comes from Pangyrus’ sole director, as that company confirmed at the hearing, it comes from a person who is not independent of Pangyrus and cannot, on its own, constitute sufficient proof of the assertions contained therein.

125    It follows from case-law that, where a statement has been established pursuant to Article 78(1)(f) of Regulation No 207/2009 by one of the applicant company’s executives, probative value cannot be attributed to that statement unless it is corroborated by other evidence (see, to that effect, judgment of 13 May 2009 in Schuhpark Fascies v OHIM — Leder & Schuh (jello SCHUHPARK), T‑183/08, EU:T:2009:156, paragraph 39).

126    As it is, it must be held that the content of Mr P’s statement is in no way corroborated by the other evidence adduced by Pangyrus.

127    Indeed, in that statement, Mr P asserted that Ms A and Mr Ck had informed him that Pangyrus held the intellectual property rights in various products, including COLOURBLIND, which was consistent with the warranties given by those persons in the 1998 agreement. However, that assertion is not corroborated by any of the evidence mentioned above (see paragraphs 87 to 117 above).

128    Mr P also declared that Mr Cx had never requested or taken a royalty in respect of COLOURBLIND. However, that assertion is not substantiated or confirmed by any evidence whatsoever.

129    In addition, Mr P stated that he had informed Mr G of the fact that Pangyrus was the owner of the intellectual property rights relating to COLOURBLIND. Nonetheless, nowhere is it specified which intellectual property rights were involved and, in any event, that information is not confirmed by Mr G’s statement (see paragraph 122 above).

130    Furthermore, Mr P indicated that Mr Ck had made him an offer to purchase COLOURBLIND, which was consistent with the fact that Pangyrus owned the intellectual property rights relating to COLOURBLIND. In that regard, it must be borne in mind that the offer was made to Future Factory, and not to Pangyrus (see paragraph 113 above).

131    Lastly, Mr P asserted that, during the summer of 2003, he had maintained that Cordyn Group owned the products and the intellectual property rights. Given that Mr P is currently the sole director of Pangyrus (see paragraph 14 above), it must be found that, apart from the fact that that assertion is neither supported nor confirmed by any evidence whatsoever, it contradicts both other assertions in that statement and Pangyrus’ argument in the present proceedings that it owned the intellectual property rights, at least in the sign in question.

 Conclusions

132    In the light of all of the foregoing, it must be concluded that, as OHIM found, Pangyrus’ argument that it owned the sign in question is not supported by the evidence produced by that company, regardless of whether that evidence was examined in the contested decision. Indeed, that evidence does not constitute evidence attesting, or from which it could be objectively inferred, that the intellectual property rights in the sign in question had been transferred by Mr Cx to Pangyrus and that that company was the owner of those rights at the relevant time. As a result, it is also necessary to conclude that, contrary to Pangyrus’ assertions, the Board of Appeal did not fail to take into account certain considerations which were relevant and significant in that regard.

133    In addition, in the light of the evidence produced, it cannot be excluded that Mr Cx considered himself to have rights in the sign in question up until the moment of their transfer to RSVP Design and that, as OHIM contends, both Pangyrus and Future Factory made use of that sign under an implied or informal agreement on his part.

134    Consequently, contrary to Pangyrus’ assertions, it cannot be objectively inferred from the evidence produced that there was a common understanding that Pangyrus owned the sign in question; and the Board of Appeal made no error in that regard in paragraph 29 of the contested decision.

135    Therefore, contrary to Pangyrus’ arguments, it has not demonstrated that the underlying aim of the application for registration of the contested trade mark was to ‘lay hands’ on the trade mark of a third party with whom Mr Cx had had contractual or pre-contractual relations and that it was clearly intended to prevent Pangyrus from making any further commercial use of that trade mark.

4.     Pangyrus’ lack of information as regards the filing of the application for registration of the contested trade mark

136    Pangyrus also relies, in essence, on the conduct of Mr Cx and RSVP Design regarding the filing of the application for registration of the contested trade mark. It argues, first, that Mr Cx, despite his relationships, in his capacity as shareholder and director, with both Pangyrus and, subsequently, Future Factory, transferred the rights in the sign in question to RSVP Design before filing that application and, second, that RSVP Design did not then inform Pangyrus before the fact that the application was going to be filed. In addition, both in its response to a written question from the Court and at the hearing, Pangyrus maintained that, even assuming that it was only the beneficial owner of rights in the sign in question, and not the legal owner of those rights, Mr Cx had deprived it of a right without warning and had thus acted in bad faith.

137    That argument cannot succeed. Although RSVP Design does not deny that the information was not communicated to Pangyrus, it must nevertheless be held that that fact does not permit a finding that Mr Cx acted in bad faith. To the extent that Pangyrus seems to be of the view that that duty to provide information was the result of its purported ownership of the sign in question, it must be borne in mind that it has not been able to adduce proof in that regard.

138    Furthermore, it should be borne in mind that it cannot be affirmed that Pangyrus was beneficial owner of rights in the sign in question, as no mention of that sign was made in the 1998 agreement (see paragraph 101 above). In any event, Pangyrus could not be deprived of any rights at the relevant time in so far as (as it confirmed at the hearing) it had been removed from the register, both by the time of the transfer by Mr Cx to RSVP Design of the rights in the sign in question (28 August 2003) and by the relevant time. In that regard, it should be noted that, contrary to what Pangyrus implied at the hearing, the Board of Appeal did not find that removal to be an objective factor indicating bad faith.

139    The fact that Pangyrus had not existed in law from May 2003 until after the relevant time (see paragraph 14 above) explains — as RSVP Design stated in its response to a written question from the Court — why Mr Cx did not inform Pangyrus of the transfer to RSVP Design of the rights concerned.

140    Furthermore, as RSVP Design explained in response to a written question from the Court, Mr P was informed by letter of 6 October 2003 sent (on behalf of Mr Cx, among others) by RSVP Design to Future Factory and marked for his attention, that the sign in question had been transferred to RSVP Design and registered. It should be observed that, on that date, the application for registration of the sign in question had been filed, but the sign had not been registered: it was not registered until 4 February 2005. Therefore, by that information, contrary to what Pangyrus suggests, RSVP Design gave Mr P and Future Factory — Pangyrus having been dissolved — the opportunity to consider whether it was appropriate to oppose the application for registration of the sign in question, and that application cannot be regarded as a ‘concealed act’ intended to prevent Mr P from making any further use of that sign.

141    Consequently, since the burden of proving bad faith lies with Pangyrus and the existence of bad faith must be established on the basis of objective evidence, it must be concluded that Pangyrus has failed to prove that the application for registration of the contested trade mark was filed in knowing disregard of its rights in the sign in question; nor, by extension, has Pangyrus proved bad faith on the part of Mr Cx.

142    It follows from all of the foregoing that Pangyrus has not adduced evidence demonstrating, or from which it could be objectively inferred, that RSVP Design’s behaviour constituted conduct in bad faith at the relevant time, and that the Board of Appeal did not err in concluding, in paragraph 32 of the contested decision, that there was no bad faith on the part of RSVP Design at the relevant time.

143    Accordingly, the first plea in law must be rejected and, in consequence, the action must be dismissed in its entirety, without it being necessary to give a ruling on the admissibility of the first head of claim, by which the Court is asked to reinstate the Cancellation Division’s decision.

 Costs

144    Under Article 87(2) 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. As Pangyrus has been unsuccessful, it must be ordered to pay the costs incurred by OHIM and by RSVP Design, in accordance with the forms of order sought by those parties.

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Pangyrus Ltd to pay the costs.

Berardis

Czúcz

Popescu

Delivered in open court in Luxembourg on 26 February 2015.

[Signatures]

Table of contents


Background to the dispute

Forms of order sought

Law

I - Admissibility

II - Substance

A — Second plea in law: infringement of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) of that regulation

B — First plea in law: infringement of Article 52(1)(b) of Regulation No 207/2009

1. Determination of the relevant time, the burden of proof and whether the alleged bad faith on the part of Mr Cx can be imputed to RSVP Design

2. The origin of the sign in question and Mr Cx’s knowledge regarding its existence and use

3. Mr Cx’s intention

a) No right based on the use, on Pangyrus’ behalf, of the sign in question

b) No proof of the transfer to Pangyrus of intellectual property rights in the sign in question

Documents relied on by Pangyrus and examined in the contested decision

– The 1998 agreement

– The letter to the national tax authorities of 9 July 1998

– Future Factory’s business plan of 19 May 2000

Documents relied on by Pangyrus and not examined by the Board of Appeal

– A document of June 2002 relating to Future Factory’s communication activities

– Future Factory’s brochure

– The attempt of 2 August 2003 to purchase the range of products, and Mr P’s letter of 12 September 2003

– The letter of 24 April 2006 addressed to Mr G

– The statements made by Mr G, Mr M and Mr P, dated 17, 19 and 20 June 2008 respectively

Conclusions

4. Pangyrus’ lack of information as regards the filing of the application for registration of the contested trade mark

Costs


* Language of the case: English.