Case T‑82/14

Copernicus-Trademarks Ltd

v

European Union Intellectual Property Office

(European Union trade mark — Proceedings for a declaration of invalidity — European Union word mark LUCEO — Absolute ground for refusal — Bad faith during the filing of the application for registration — Article 52(1)(b) of Regulation (EC) No 207/2009)

Summary — Judgment of the General Court (Ninth Chamber), 7 July 2016

1.      Judicial proceedings — Examination of the substance before examination of admissibility — Lawfulness

2.      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 — Intention of the applicant — Origin of the disputed trade mark — Commercial logic underlying 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))

1.      See the text of the decision.

(see para. 21)

2.      The concept of bad faith referred to in Article 52(1)(b) of Regulation No 207/2009 relates to a subjective motivation on the part of the trade mark applicant, namely a dishonest intention or other ‘sinister motive’. It involves conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices.

In order to assess whether a depositor is acting in bad faith, it is necessary inter alia to examine whether he intends to use the mark applied for. In that context, it should be noted that the essential function of a trade mark is to ensure that the consumer or end-user can identify the origin of the product or service concerned by allowing him to distinguish that product or service from those of different origin, without any confusion.

The intention to prevent the marketing of 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 it becomes apparent, subsequently, that the latter applied for registration of a European Union trade mark without intending to use it, solely with a view to preventing a third party from entering the market.

The intention of the applicant at the relevant time is a subjective factor which must be assessed by taking into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration of a sign as a European Union trade mark. Those grounds are normally established by reference to objective criteria, including, in particular, the commercial logic underlying the filing of the application for registration.

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 European Union trade mark, and the chronology of events leading up to that filing.

Where an applicant seeks to rely on the ground of absolute invalidity, it is for that party to prove the circumstances which substantiate a finding that the European Union trade mark proprietor had been acting in bad faith when it filed the application for registration of that mark.

(see paras 28-33)