Case T-291/09

Carrols Corp.

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark — Invalidity proceedings — Figurative Community mark Pollo Tropical CHICKEN ON THE GRILL — Absolute grounds for refusal — No bad faith — Article 52(1)(b) of Regulation (EC) No 207/2009)

Summary of the Judgment

1.      Community trade mark — Appeals procedure — Appeals before the Community judicature — Legality of the decision of a Board of Appeal adjudicating in opposition proceedings — Challenged by the adducing of new facts — Not permissible — Account taken, for the purposes in interpreting Community law, of Community, national or international case‑law not relied on before OHIM — Permissible

(Council Regulation No 207/2009, Art. 65)

2.      Community trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Applicant in bad faith at the time of lodging the trade mark application — Criteria for assessment — Account taken of all relevant factors at the time the registration application was filed

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

1.      The purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) within the meaning of Article 65 of Regulation No 207/2009 on the Community trade mark. It is therefore not the Court’s function to re-evaluate the factual circumstances in the light of evidence which has been adduced for the first time before it. It follows that only evidence which was adduced in the administrative procedure before OHIM is admissible.

However, national legal decisions, even when they have not been relied on in the procedure before OHIM, must be declared admissible. Neither the parties nor the Court itself can be precluded from drawing on European Union, national or international case‑law for the purposes of interpreting European Union law. It follows that the parties must have the possibility of referring to national judgments for the first time before the Court where the plea is not that the Board of Appeal failed to take the factual aspects of a specific national judgment into account but that it infringed a provision of Regulation No 207/2009, with case‑law cited in support of that plea.

(see paras 30, 31, 34, 35)

2.      The issue whether the applicant is acting in bad faith, within the meaning of Article 52(1)(b) of Regulation No 207/2009 on the Community trade mark, must be the subject of an overall assessment, taking into account all the factors relevant to the particular case.

A presumption of knowledge, by the applicant, 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 could arise inter alia from general knowledge in the economic sector concerned of such use, and that knowledge could 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.

However, the fact that the applicant knows or must know that a third party has long been using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought is not sufficient, in itself, to permit the conclusion that the applicant was acting in bad faith. The applicant’s intention at the relevant time is a subjective factor which must be determined by reference to the objective circumstances of the particular case. Accordingly, the intention to prevent a third party from marketing a product may, in certain circumstances, be an element of bad faith on the part of the applicant. That is in particular the case when the applicant applied for registration of a sign as a Community trade mark without intending to use it, his sole objective being to prevent a third party from entering the market.

The fact that a third party has long used a sign for an identical or similar product capable of being confused with the mark applied for and that that sign enjoys some degree of legal protection is one of the factors relevant to the determination of whether the applicant was acting in bad faith. Even in such a case, however, registration of a Community trade mark might not be interpreted as having been made in bad faith, inter alia, where the applicant knows, when filing the application for registration, that a third party, who is a newcomer in the market, is trying to take advantage of that sign by copying its presentation, and the applicant seeks to register the sign with a view to preventing use of that presentation.

In order to determine whether the applicant is acting in bad faith, consideration may be given to the extent of the well-known character enjoyed by a sign at the time when the application for its registration as a Community trade mark is filed. The extent of that well-known character might justify the applicant’s interest in ensuring a wider legal protection for his sign.

(see paras 48-54)