JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
21 February 2024 (*)
(EU trade mark – Invalidity proceedings – EU word mark hepsiburada – Absolute ground for invalidity – Bad faith – Article 52(1)(b) of Regulation (EC) No 207/2009 (now Article 59(1)(b) of Regulation (EU) 2017/1001))
In Case T‑172/23,
Dendiki BV, established in Roosendaal (Netherlands), represented by N. Ruyters and A. Klomp, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
D-Market Elektronik Hizmetler ve Ticaret Anonim Sirketi, established in Istanbul (Türkiye), represented by I. Robledo McClymont and M. Hernández Gázquez, lawyers,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, U. Öberg and E. Tichy-Fisslberger (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Dendiki BV, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 24 January 2023 (Case R 639/2021-4) (‘the contested decision’).
Background to the dispute
2 On 6 November 2019, the intervener, D-Market Elektronik Hizmetler ve Ticaret Anonim Sirketi, filed with EUIPO an application for a declaration of invalidity of the EU trade mark which had been registered following an application filed on 28 August 2017 by Alpak BV, the predecessor in title to the applicant, for the word sign hepsiburada.
3 The goods and services covered by the contested mark in respect of which a declaration of invalidity was sought were in Classes 21 and 35 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 corresponded, for each of those classes, to the following description:
– Class 21: ‘Tableware, cookware and containers; Statues, figurines, plaques and works of art, made of materials such as porcelain, terra-cotta or glass, included in the class; Cosmetic and toilet utensils and bathroom articles; Brushes and other articles for cleaning, brush-making materials; Apple corers; Bouquet holders; Bowls for floral decorations; Bowls for plants; Compost containers for household use; Containers for flowers; Flower baskets; Flower bowls; Flower bowls of precious metal; Flower pot holders; Flower pots; Flower syringes; Flower vases; Flower vases of precious metal; Flower-pot covers, not of paper; Garden syringes; Gardening gloves; Glass vases; Greenhouse syringes; Holders for flowers; Holders for flowers and plants [flower arranging]; Indoor terrariums [plant cultivation]; Indoor terrariums [vivariums]; Jardinieres of earthenware; Jardinieres of glass; Water syringes for spraying plants; Vases; Syringes for watering flowers and plants; Sprinklers; Sprayers attached to garden hoses; Sprayer wands for garden hoses; Spray nozzles for garden hoses; Seed trays; Seed tray inserts; Saucers for flower pots; Repotting containers for plants; Pot plant support sticks; Porcelain flower pots; Plastic spray nozzles; Planters of plastic; Planters of glass; Plastic lids for plant pots; Planters of earthenware; Planters of clay; Plant syringes; Plant baskets; Nozzles for watering hose; Nozzles for watering cans; Nozzles for hosepipes; Lawn sprinklers; Watering cans; Watering devices; Window-boxes; Aquaria and vivaria; Devices for pest and vermin control; Animal activated animal feeders; Animal activated livestock feeders; Animal activated livestock waterers; Animal bristles [brushware]; Bird baths; Bird baths not being structures; Bird cages for domestic birds; Bird feeders; Bird feeders for feeding birds in the wild; Bird feeders for feeding caged birds; Bird feeders in the nature of containers; Birdcages; Brushes for grooming horses; Brushes for pets; Cages for household pets; Cages of metal for domestic use; Cat litter pans; Combs for animals; Drinking troughs; Dog food scoops; Currycombs; Containers for bird food; Combs for use on domestic animals; Pig troughs; Pet feeding and drinking bowls; Perches for bird cages; Non-mechanized pet waterers in the nature of portable water and fluid dispensers for pets; Non-mechanized animal feeders; Nest eggs, artificial; Metal pans for cattle; Mangers for sheep; Mangers for horses; Mangers for cows; Mangers for animals; Mane brushes [horse combs]; Litter trays for birds; Litter scoops for use with pet animals; Horse brushes; Goldfish bowls; Fur brushes for animals; Food containers for pet animals; Filters for use in cat litter pans; Feeding troughs of metal for cattle; Feeding troughs for livestock; Feeding troughs; Electronic pet feeders; Wire cages for household pets; Watering troughs for cattle; Small animal feeders; Scoops for the disposal of pet waste; Scoops for the disposal of animals excrement; Rings for birds; Poultry troughs; Poultry rings; Plastics trays for use as litter trays for cats; Plastic containers for dispensing food to pets; Plastic containers for dispensing drink to pets; Water tanks [for live fish]; Terrariums; Stands for indoor aquaria [other than furniture]; Insect vivaria; Insect habitats; Indoor terrariums for insects; Indoor terrariums for animals; Indoor aquaria; Aquariums; Aquarium ornaments; Aquarium hoods; Ant vivaria; Ant habitats; Battery operated lint removers; Boot jacks; Boot stretchers of wood; Boot trees [stretchers]; Brushes for footwear; Buttonhooks; Clothes brushes; Clothes drying hangers; Clothes drying hangers specially designed for specialty clothing; Clothes drying racks; Clothes-pegs; Clothing stretchers; Drying racks for laundry; Electric lint removers; Flat-iron stands; Frames for drying and maintaining the shape of clothing items; Glove stretchers; Ironing board covers, shaped; Ironing boards; Ironing cloths; Laundry baskets; Lint removers, electric or non-electric; Non-electric lint removers; Shirt stretchers; Shoe cloths; Shoe polishing mitts; Shoe scrapers incorporating brushes; Shoe shine cloths; Shoe trees [stretchers]; Tie presses; Trouser presses; Trouser stretchers; Wax-polishing appliances, non-electric, for shoes; Brushes and brush-making articles; Cleaning articles; Glass rods; Glass powder; Glass panels [semi-finished article]; Glass incorporating fine electrical conductors; Glass incorporating electrical conductors; Glass for vehicle windows [semi-finished product]; Glass bars, not for building; Glass (Semi-worked -) for vehicles; Glass (Semi-worked -) adapted to absorb ultra-violet radiation; Glass (Semi-worked -) adapted to absorb heat; Fused silica [semi-worked product], other than for building; Fused quartz; Float glass [semi-worked]; Figured plate glass, not for building; Fibreglass, other than for insulation or textile use; Fibreglass thread, not for textile use; Fabricated safety glass for installation into vehicles; Enamelled glass, not for building; Enamelled glass; Decorative stained glass; Decorative glass [not for building]; Common sheet glass [not for building]; Coloured glass (Semi-worked -); Colored sheet glass [not for building]; Anti-reflecting glass; Semi-worked glass; Semi-finished safety glass; Security glass for making into vehicle windows; Profiled glass [semi-finished]; Pressed glass; Powdered glass for decoration; Porous glass; Polished plate glass; Plate glass for cars; Plate glass being unworked; Plate glass [raw material]; Open pored sintered glass; Opaline glass; Opal glass; Mosaics of glass, not for building; Modified sheet glass [not for building]; Luminous glass [not for building]; Laminated glass [other than for building]; Laminated flat glass [not for building]; Heat reflecting glass [semi-worked]; Heat protective glass (Semi-worked -); Glass, unworked or semi-worked, except building glass; Glass wool, other than for insulation; Glass tubing for use in making signs; Wired plate glass, not for building; Vitreous silica fibers [fibres], not for textile use; Unworked glass [except glass used in building]; Unworked glass; Unfinished glass for vehicle windows; Tempered glass [not for building]; Stamped glass; Spun glass; Smoothed plate glass; Sheets of glass, other than for building; Semi-worked glass [except glass used in building].’
– Class 35: ‘Advertising, marketing and promotional services; Business analysis, research and information services; Business assistance, management and administrative services; Auctioneering services; Rental of vending machines; Administration of newspaper subscription [for others]; Administrative order processing; Administrative processing and organising of mail order services; Administrative processing of computerized purchase orders; Administrative processing of purchase orders; Administrative processing of purchase orders placed by telephone or computer; Administrative processing of purchase orders within the framework of services provided by mail-order companies; Administrative processing of warranty claims; Administrative services relating to dental health insurance; Administrative services relating to employee stock plans; Administrative services relating to the referral of clients to lawyers; Administrative services relating to the referral of patients; Administrative services relating to warranty claims processing; Advertising of the services of other vendors, enabling customers to conveniently view and compare the services of those vendors; Advice relating to barter trade; Advisory and consultancy services relating to the procurement of goods for others; Advisory services relating to commercial transactions; Advisory services relating to the ordering of stationery; Advisory services relating to the purchase of goods on behalf of business; Advisory services relating to the purchase of goods on behalf of others; Alcoholic beverage procurement services for others [purchasing goods for other businesses]; Arranging and conducting sales events for livestock; Mail order retail services connected with clothing accessories; Mail order retail services for clothing; Mail order retail services for cosmetics; Mail order retail services related to alcoholic beverages (except beer); Mail order retail services related to beer; Mail order retail services related to foodstuffs; Mail order retail services related to non-alcoholic beverages; Online retail services relating to clothing; Online retail services relating to cosmetics; Online retail services relating to handbags; Online retail services relating to jewelry; Online retail services relating to luggage; Online retail services relating to toys; Online retail store services relating to clothing; Online retail store services relating to cosmetic and beauty products; Rental of sales stands; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Retail services connected with stationery; Retail services connected with the sale of clothing and clothing accessories; Retail services connected with the sale of furniture; Retail services in relation to computer software; Retail services in relation to paints; Retail services in relation to pushchairs; Retail services in relation to recorded content; Retail services in relation to safes; Arranging subscriptions of the online publications of others; Arranging subscriptions to Internet services; Arranging subscriptions to a television channel; Arranging subscriptions to electronic journals; Arranging subscriptions to information media; Arranging subscriptions to information packages; Arranging subscriptions to media packages; Arranging subscriptions to telephone services; Computerized on-line ordering services; Consultancy relating to costing of sales orders; Consultancy services relating to the procurement of goods and services; Consulting in sales techniques and sales programmes; Coupon procurement services for others; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Electronic order processing; Energy price comparison services; Negotiation and conclusion of commercial transactions for third parties; Negotiation and conclusion of commercial transactions for third parties via telecommunication systems; Negotiation of contracts relating to the purchase and sale of goods; Negotiation of contracts with health care payors; Newspaper subscriptions; On-line ordering services in the field of restaurant take-out and delivery; Online ordering services; Ordering services for third parties; Providing consumer product information; Providing consumer product information relating to cosmetics; Providing consumer product information relating to food or drink products; Providing consumer product information relating to laptops; Providing consumer product information relating to software; Providing information via the Internet relating to the sale of automobiles; Provision of an on-line marketplace for buyers and sellers of goods and services; Provision of information concerning commercial sales; Subscriptions to electronic journals; Subscriptions to telecommunications database services; Tariff information and advisory services; Telemarketing services; Telephone order-taking services for others; The bringing together, for the benefit of others, of a variety of insurance services, enabling consumers to conveniently compare and purchase those services; The bringing together, for the benefit of others, of a variety of telecommunications services, enabling consumers to conveniently compare and purchase those services; Wholesale ordering services; Retail services in relation to lighting; Retail services in relation to litter for animals; Retail services in relation to musical instruments; Retail services in relation to printed matter; Retail services in relation to sanitation equipment; Retail services in relation to teas; Retail services in relation to time instruments; Retail services in relation to veterinary instruments; Retail services in relation to sanitary installations; Retail services in relation to sex aids; Retail services in relation to stationery supplies; Retail services in relation to sun tanning appliances; Retail services in relation to tobacco; Retail services in relation to umbrellas; Retail services in relation to veterinary apparatus; Retail services in relation to water supply equipment; Retail services in relation to toiletries; Retail services in relation to vehicles; Retail services in relation to veterinary articles; Retail services in relation to veterinary preparations; Retail services in relation to wall coverings; Retail services in relation to weapons; Retail services in relation to works of art; Retail services in relation to yarns; Retail services in relation to information technology equipment; Retail services in relation to lubricants; Retail services in relation to medical apparatus; Retail services in relation to navigation devices; Retail services in relation to seafood; Retail services in relation to sorbets; Retail services in relation to sporting articles; Retail services in relation to tableware; Retail services in relation to hygienic implements for animals; Retail services in relation to mobile phones; Retail services in relation to pet products; Retail services in relation to smartphones; Retail services in relation to smartwatches; Retail services in relation to toys; Retail services in relation to wearable computers; Retail services relating to fake furs; Retail store services in the field of clothing; Shop retail services connected with carpets; Wholesale services in relation to food cooking equipment; Wholesale services in relation to freezing equipment; Wholesale services in relation to jewellery; Wholesale services in relation to metal hardware; Wholesale services in relation to refrigerating equipment; Wholesale services in relation to toiletries; Wholesale services in relation to meats; Wholesale services in relation to non-alcoholic beverages; Wholesale services in relation to saddlery; Wholesale services in relation to stationery supplies; Wholesale services in relation to umbrellas; Wholesale services in relation to vehicles; Wholesale services in relation to weapons; Wholesale services in relation to works of art; Wholesale services in relation to tableware; Wholesale services in relation to threads; Wholesale services in relation to tobacco; Wholesale services in relation to toys; Wholesale services in relation to veterinary articles; Wholesale services in relation to veterinary preparations; Wholesale services in relation to veterinary preparations and articles; Wholesale services in relation to yarns; Wholesale services in relation to information technology equipment; Wholesale services in relation to kitchen knives; Wholesale services in relation to navigation devices; Wholesale services in relation to preparations for making alcoholic beverages; Wholesale services in relation to seafood; Wholesale services in relation to sporting articles; Wholesale services in relation to sporting equipment; Wholesale services in relation to wall coverings; Wholesale services in relation to sanitation equipment; Wholesale services in relation to sorbets; Wholesale services in relation to teas; Wholesale services in relation to veterinary apparatus; Wholesale services in relation to veterinary instruments; Wholesale services in relation to water supply equipment; Wholesale services relating to automobile accessories; Wholesale services relating to fake furs; Wholesale services relating to automobile parts; Wholesale services relating to candy; Wholesale services relating to flowers; Wholesale services relating to furs; Wholesale services relating to sporting goods.’
4 The ground relied on in support of the application for a declaration of invalidity was that set out in Article 59(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
5 On 10 February 2021, the Cancellation Division rejected the application for a declaration of invalidity.
6 On 9 April 2021, the intervener lodged a notice of appeal with EUIPO against the decision of the Cancellation Division.
7 By the contested decision, the Board of Appeal upheld the appeal and annulled the Cancellation Division’s decision on the ground that the applicant’s predecessor in title had acted in bad faith at the time of filing the contested mark. In particular, it found that, given the chronology of events, the objective circumstances and all the indications considered together, it was inconceivable that the applicant’s predecessor in title would not have been aware of the intervener’s identical and similar earlier marks, of the fact that they were well known or even reputed in Türkiye, and of their use in Türkiye and abroad, including in many Member States of the European Union, and that its intention, when filing the contested mark, had been to use that mark honestly in the course of trade and not to block the intervener from gaining access to the EU market and to take its market share (paragraph 63 of the contested decision).
Forms of order sought
8 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
9 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in case an oral hearing is convened.
10 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The applicable substantive law ratione temporis
11 In the light of the date on which the application for registration at issue was filed, namely 28 August 2017, which is determinative for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).
Admissibility of new evidence and arguments
12 EUIPO claims that Annexes A.6 to A.13 to the application and the applicant’s related arguments are submitted for the first time before the Court and must, therefore, be declared inadmissible. The intervener submits that, in addition to those annexes, Annex A.5 to the application was also produced for the first time before the Court.
13 Those documents correspond to screenshots of a prospectus of the intervener dating from 2021 (Annex A.5), professional Facebook and Instagram accounts using the sign hepsiburada (Annex A.6), personal Facebook accounts showing that ‘Hepsi Burada’ is also a personal name (Annex A.7), the website ‘www.hepsiburada.com’ (Annex A.8), the website ‘www.global.hepsiburada.com/welcome’ (Annex A.9), a global promotional presentation by Hepsiburada dated October 2022 (Annex A.10), the website ‘www.hepsiburada.life’ as at 2 December 2019 (Annex A.11), the website ‘www.dendiki.nl’ as at 30 March 2023 (Annex A.12) and invoices from the applicant (Annex A.13).
14 The Court notes that those documents were not part of the administrative file submitted by the applicant during the procedure before EUIPO and that they were produced for the first time before the Court.
15 In that regard, the Court notes that the purpose of bringing actions before the General Court is to review the legality of the decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001 and that, in proceedings for annulment, the legality of the contested measure must be assessed on the basis of the elements of fact and of law existing at the time when the measure was adopted. Therefore, it is not the Court’s function to re-evaluate the factual circumstances in the light of evidence adduced for the first time before it (see judgment of 13 May 2020, Peek & Cloppenburg v EUIPO – Peek & Cloppenburg (Peek & Cloppenburg), T‑444/18, not published, EU:T:2020:185, paragraph 36 and the case-law cited).
16 The position is different where the Boards of Appeal rely on matters of common knowledge or on the particular understanding of those matters by their members. In such a case, the adversely affected party may dispute its accuracy in its action before the General Court and the evidence put forward in support of that challenge is, therefore, admissible (judgment of 21 December 2022, Sanrio v EUIPO – Miroglio Fashion (SANRIO CHARACTERS), T‑43/22, not published, EU:T:2022:844, paragraph 19). Well-known facts are facts which are likely to be known by anyone or which may be learnt from generally accessible sources (see judgment of 19 January 2022, Tecnica Group v EUIPO – Zeitneu (Shape of a boot), T‑483/20, not published, EU:T:2022:11, paragraph 67 and the case-law cited).
17 In the present case, Annexes A.5 to A.13 are put forward in support of the applicant’s complaint alleging the lack of legal protection of the intervener’s earlier Turkish marks (Annexes A.5 to A.7) and to establish, first, the languages in which the websites ‘www.hespsiburada.com’, ‘www.global.hepsiburada.com/welcome’, ‘www.hepsiburada.life’ and ‘www.dendiki.nl’ are accessible (Annexes A.8, A.9, A.11 and A.12), second, the fact that the intervener was not active in the European Union in 2017 (Annex A.10) and, third, the applicant’s use of the contested mark (Annex A.13).
18 Thus, the applicant does not dispute the accuracy of a well-known fact within the meaning of the case-law cited in paragraph 16 above.
19 Accordingly, the documents referred to above and the arguments based on those documents, which were produced and put forward, respectively, for the first time before the Court, cannot be taken into consideration and must be declared inadmissible (judgment of 24 June 2014, Unister v OHIM (Ab in den Urlaub), T‑273/12, not published, EU:T:2014:568, paragraphs 43 and 44).
Substance
20 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 52(1)(b) of Regulation No 207/2009.
21 The applicant submits that the Board of Appeal erred in finding that its predecessor in title acted in bad faith when it filed the application for registration of the contested mark. In essence, first, the applicant submits that the intervener’s marks enjoy weak legal protection, if any. Second, it submits that the goods and services in respect of which the contested mark and the intervener’s marks were filed are neither identical nor similar. Third, the applicant claims that its predecessor in title did not know and need not have known that the intervener was using an identical and similar mark. Fourth, that predecessor in title did not intend to prevent the intervener from continuing to use the sign hepsiburada.
22 EUIPO and the intervener dispute the applicant’s arguments.
23 Article 52(1)(b) of Regulation No 207/2009 provides that an EU trade mark is to 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 he filed the application for the trade mark.
24 The Court of Justice has made clear that the absolute ground for invalidity referred to in Article 52(1)(b) of Regulation No 207/2009 applies where it is apparent from relevant and consistent indicia that the proprietor of an EU trade mark has filed the application for registration of that mark not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, 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, in particular the essential function of indicating origin (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 46).
25 The Court of Justice has also stated that the intention of an applicant for a trade mark 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. It is only in that manner that a claim of bad faith can be assessed objectively (see 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).
26 The factors taken into account by the case-law in the context of the global analysis undertaken pursuant to Article 52(1)(b) of Regulation No 207/2009 include, in particular, 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, the applicant’s intention to prevent that third party from continuing to use such a sign, the degree of legal protection enjoyed by the signs at issue, the applicant’s intention to prevent a third party from marketing a product, the origin of the contested sign and how it has been used since it was created, the commercial logic of which the filing of the application for registration of the sign as an EU trade mark forms a part, and the chronology of events relating to the filing (see, to that effect, judgments of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraphs 38, 43 and 44, and of 28 January 2016, Davó Lledó v OHIM – Administradora y Franquicias América and Inversiones Ged (DoggiS), T‑335/14, EU:T:2016:39, paragraphs 46 and 48).
27 In addition, it is for the applicant for a declaration of invalidity who intends to rely on Article 52(1)(b) of Regulation No 207/2009 to prove the circumstances which make it possible to conclude that an application for registration of an EU trade mark was filed in bad faith, the good faith of the trade mark applicant being presumed until proven otherwise (see, to that effect, judgment of 21 April 2021, Hasbro v EUIPO – Kreativni Dogadaji (MONOPOLY), T‑663/19, EU:T:2021:211, paragraph 42 and the case-law cited).
28 Where the objective circumstances of the particular case which were relied on by the applicant for a declaration of invalidity may lead to the rebuttal of the presumption of good faith which the proprietor of the mark at issue enjoys when he or she files the application for registration of that mark, it is for the proprietor of that mark to provide plausible explanations regarding the objectives and commercial logic of the application for registration of that mark. The proprietor of the trade mark at issue is best placed to provide EUIPO with information regarding his or her intentions at the time of applying for registration of that mark and to provide it with evidence capable of convincing it that, in spite of the existence of objective circumstances, those intentions were legitimate (see, to that effect, judgment of 21 April 2021, MONOPOLY, T‑663/19, EU:T:2021:211, paragraphs 43 and 44 and the case-law cited).
29 It is in the light of the considerations above that the lawfulness of the contested decision must be reviewed.
30 In the present case, the applicant’s arguments concern the degree of legal protection of the marks at issue, the identity or similarity of the goods and services at issue, the awareness of the use of the intervener’s earlier Turkish marks and the intention of the applicant’s predecessor in title (see paragraph 21 above). Those factors, which are relevant in accordance with the case-law cited in paragraph 26 above, must therefore be examined in turn.
The degree of legal protection enjoyed by the intervener’s earlier marks
31 The applicant submits that the intervener’s earlier marks are registered only as far as concerns Turkish territory. It submits that, because of the meaning of the term ‘hepsiburada’, those marks are devoid of any distinctive character or, in so far as they are used in relation to non-Turkish-speaking customers, possess only a minimum degree of distinctiveness. The European Union has a large Turkish and Turkish-speaking population which will perceive those marks as descriptive and generic. The applicant states that those marks have become customary for the services for which they are registered. The intervener’s earlier Turkish marks therefore have a low level of legal protection, if any. Furthermore, the applicant disputes that the intervener used the sign hepsiburada in the European Union at the time when the contested mark was filed and the fact that it was known to the European public or had gained a reputation with that public. It adds that the invoices produced cover only the period from 2015 to 2017 and contain the same addresses a number of times.
32 EUIPO and the intervener dispute that line of argument.
33 In the first place, the Court notes that the applicant is not contesting the finding in paragraphs 38, 40 and 41 of the contested decision that the intervener who is the owner of the website ‘www.hepsiburada.com’, an e-commerce platform on which a large number of products are sold, is the owner of 19 earlier Turkish marks, each of which include the word mark ‘hepsiburada’ and are registered for services in Classes 35, 38 and 42. Those marks include, inter alia, the Turkish mark HEPSIBURADA, registered under number 2012/79983 and filed on 20 September 2012, the Turkish mark hepsiburadaoutlet, registered under number 2010/48306 and filed on 22 July 2010 and the Turkish mark registered under number 2000/20142, filed on 22 September 2000 and reproduced below:
34 Nor is the applicant contesting that, as stated in paragraph 60 of the contested decision, the contested mark is identical or very similar to those earlier marks, since it consists solely of the term ‘hepsiburada’, which is the central element of those earlier marks.
35 It has already been acknowledged in the case-law that a third party’s use of a mark, which is identical or similar to the registered mark, exclusively outside of the European Union is relevant for the purposes of assessing whether there is bad faith (judgments of 28 October 2020, Target Ventures Group v EUIPO – Target Partners (TARGET VENTURES), T‑273/19, EU:T:2020:510, paragraph 47, and of 17 March 2021, Tehrani v EUIPO – Blue Genes (Earnest Sewn), T‑853/19, not published, EU:T:2021:145, paragraph 39).
36 Further, the invoices produced by the intervener before the adjudicating bodies of EUIPO show that, as stated in paragraphs 38 and 42 of the contested decision, the intervener has used the website ‘www.hebsiburada.com’ and the sign hepsiburada since 2016 in the context of the delivery of goods to customers within the European Union, including the Netherlands, where the seat of the applicant’s predecessor in title was located.
37 Therefore, contrary to what the applicant claims, the intervener’s earlier Turkish marks and their use within the European Union are relevant to the assessment of bad faith (see, to that effect, judgment of 17 March 2021, Earnest Sewn, T‑853/19, not published, EU:T:2021:145, paragraph 39).
38 In the second place, to the Court notes that, unlike Article 53 of Regulation No 207/2009, which lists the grounds for the relative invalidity of an EU trade mark and thus seeks to protect the private interests of the holders of certain prior rights which conflict with the trade mark in question, Article 52(1) of that regulation, which provides, in particular, that the applicant’s bad faith when filing a trade mark application constitutes a ground for absolute invalidity, is intended to protect the public interest and may be relied on by any natural or legal person and not only by holders of prior rights. Consequently, while the reputation of an earlier sign in the European Union may, depending on the circumstances of the case, constitute a relevant factor for the assessment of bad faith, the applicant for a declaration of invalidity who relies upon that ground cannot be required systematically to establish such a reputation, in line with what is required of the applicant for a declaration of invalidity relying on the conditions of Article 53(1)(a) and Article 8(5) of Regulation No 207/2009 (see, to that effect, judgment of 23 May 2019, Holzer y Cia v EUIPO – Annco (ANN TAYLOR and AT ANN TAYLOR), T‑3/18 and T‑4/18, EU:T:2019:357, paragraphs 55, 56 and 60).
39 As stated in paragraphs 38, 40 and 41 of the contested decision, it is apparent from the documents produced by the intervener before the adjudicating bodies of EUIPO, first, that its platform ‘www.hebsiburada.com’ was among the main Turkish e-commerce suppliers in 2013 and was classified among the first 500 online European retailers in 2015 and, second, that the Turkish Patent Office concluded in 2016 that one of the intervener’s earlier marks, namely Turkish figurative mark No 2000/20142, was well known in Türkiye.
40 Therefore, even if the intervener was not required to establish the reputation of its earlier marks, that reputation in Türkiye may be taken into consideration for the purposes of assessing bad faith. By contrast, contrary to what the applicant submits, the absence of such a reputation in the European Union is not relevant to that assessment (see, to that effect, judgment of 23 May 2019, ANN TAYLOR and AT ANN TAYLOR, T‑3/18 and T‑4/18, EU:T:2019:357, paragraphs 60 and 61).
41 In the third place, the Court upholds the Board of Appeal’s finding in paragraph 43 of the contested decision and holds that the claims relating to the alleged descriptive character of the intervener’s earlier marks and their alleged lack of distinctive character are irrelevant since the term ‘hepsiburada’ is the common element of the marks at issue.
42 In any event, the bad faith of the applicant’s predecessor in title may be examined with the aid of the criteria established in the case-law cited in paragraph 26 above irrespective of whether the term ‘hepsiburada’ may be descriptive or whether that word has no distinctive character (see, to that effect and by analogy, judgment of 16 December 2020, Pareto Trading v EUIPO – Bikor and Bikor Professional Color Cosmetics Małgorzata Wedekind (BIKOR EGYPTIAN EARTH), T‑438/18, not published, EU:T:2020:630, paragraphs 28 and 29).
The identity or similarity of the goods and services at issue
43 The applicant claims that the intervener’s earlier marks are not registered for any goods, but only for services in Classes 35, 38 and 42. The goods in Class 21 for which the contested mark was registered are not identical or similar to those services. The applicant submits that the intervener cannot monopolise the sign hepsiburada through its general and broad description of those services. Following the logic of the Board of Appeal, all goods that can be sold by a provider of online retail and wholesale services are similar to the services covered by those marks. The applicant adds that, even if the marks or goods and services at issue were similar or identical, that would not be sufficient to establish bad faith in the absence of other factors.
44 EUIPO and the intervener dispute that line of argument.
45 In the first place, as regards the services at issue in Class 35, the Court notes that the applicant does not dispute the finding, in paragraph 48 of the contested decision, that those services are identical or similar to the services designated by the intervener’s earlier Turkish marks in the same class.
46 That conclusion must be upheld. As stated in paragraph 45 of the contested decision, first, the earlier Turkish mark No 2000/20142 includes the services ‘bringing goods and services together in a virtual environment and offering them for third parties to see and purchase’ in Class 35 and, second, the earlier Turkish mark No 2010/48306 includes the following services at issue in Class 35:
‘Advertising, marketing and public relations services (including organization of exhibitions and fairs for commercial and advertising purposes). Office services. Business management, administration and related consultancy, accounting and financial consultancy services (including import-export agency services). Appraisal services for commercial and industrial products. Organization and realization of auctions. Services for bringing together a variety of goods to enable customers to view and purchase goods conveniently (the services provided may be provided through retail, wholesale stores, electronic media, catalogues and other similar methods).’
47 In the second place, as regards the goods at issue in Class 21, the Court notes that, according to case-law, there is a similarity between goods and retail services which relate to those goods (see judgment of 8 February 2023, UniSkin v EUIPO – Unicskin (UNISKIN by Dr. Søren Frankild), T‑787/21, not published, EU:T:2023:56, paragraph 32 and the case-law cited).
48 Contrary to what the applicant submits, the Board of Appeal therefore did not make an error of assessment in finding, in paragraphs 44 and 48 of the contested decision, that there was a similarity between the retail services in Class 35 covered by the earlier Turkish mark No 2012/79983 and the goods in Class 21 covered by the contested mark, which may be the subject of those services including, inter alia, the retail sale of the following general categories of goods:
‘Material, frames for pictures, paintings, ID cards, tags, badges, tags. Wood or synthetic material, containers, barrels, barrels, containers, containers, containers, transport containers, crates, transport pallets and caps used therewith. Hardware or hardware made of wood or synthetic materials, furniture fittings, opening and closing devices. Ornaments and decorative articles of wood, candles, beeswax, plastic or plaster. Baskets, fishing baskets. Booths, nests, beds for pets. Portable ladders made of wood or synthetic materials, mobile ladders. Bamboo curtains, roller blinds, strip curtains, beaded curtains for decoration; curtain hooks, curtain rings, curtain hooks, curtain rods. Non-electrical cleaning equipment (including brushes, steel shavings, sponges, steel wool, upholstery, textile cleaning and wiping cloths, dishwashing gloves, non-electric polishing machines, carpet sweepers, floor mats with brushes, electric brushes without machine parts). Toothbrushes, electric toothbrushes, dental floss, shaving brushes, hair brushes, combs (including electric-non-electric make-up removal devices). Non-electrically operated household and kitchen utensils, clothes pegs, utensils, vases (including precious metal). Ironing boards and covers, clothes dryers, clothes hangers. Cages and materials for pets, plants and animals used in the home (terrariums). Ornaments and decoration articles of glass, porcelain, ceramics, clay. Mouse traps, vermin traps, fly catchers, fly rackets (mosquito nets), lids for toilet stone holes (fly and vermin repellent or destructive electrical devices) for non-electric tools, powder puffs, boxes for toiletries. Spray nozzles, nozzles for irrigation strainers, irrigation tools, garden irrigation strainers, taps fitted to taps. Raw glass, semi-processed glass, glass mosaics and glass powders for decoration (except for construction), glass wool (not for insulation and textile purposes).’
49 In any event, even if some of the goods in Class 21 and some of the services in Class 35 covered by the contested mark were not identical or similar to the services in Class 35 covered by the earlier Turkish marks, that would be irrelevant for the purposes of establishing bad faith. As EUIPO and the intervener submit, the identity and similarity of the goods and services at issue is only one relevant factor among others to be taken into consideration in order to establish bad faith within the meaning of Article 52(1)(b) of Regulation No 207/2009. In the absence of such identity or similarity, other factual circumstances may, depending on the circumstances, constitute relevant and consistent indicia establishing the bad faith of the applicant (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 51 to 56).
50 Conversely, since the identity and similarity of the goods and services at issue cannot demonstrate bad faith in the absence of any other relevant evidence (see, to that effect, judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraph 40), the argument relating to the risk that the sign hepsiburada will be monopolised must be rejected.
Awareness of the use of the intervener’s marks
51 The applicant submits that, on the date on which the contested mark was filed, the intervener did not have any trade mark registration in the European Union, nor was it visibly active on the European market. Nor has the intervener proved that its earlier Turkish marks were known in the European Union. The applicant states that no commercial relationship was established between its predecessor in title and the intervener and that there was no other link between the latter. Neither the applicant nor its predecessor in title therefore knew or should have known that the intervener was using the sign hepsiburada.
52 EUIPO and the intervener dispute that line of argument.
53 The Board of Appeal found that, first, the main activities of the applicant’s predecessor in title, which had been registered in 2016, came within the e-commerce sector, second, the director of that predecessor was a Turkish citizen residing in Istanbul (Türkiye), third, the latter was also a director of a Turkish company established in 2012 and operating in the retail sector and offering on its Turkish language website the sale of a large number of goods, fourth, the use of a term derived from two Turkish words in the contested mark implied that that mark was aimed in particular at Turkish-speaking consumers and suggested a knowledge of that language and, fifth, the registration of that mark in respect of the services in Class 35 was an indication that the use of that term was intentional.
54 In the light of those factors, which, moreover, are not disputed by the applicant, and having regard to the fact that, first, the intervener’s earlier Turkish trade mark No 2000/20142 was well known in Türkiye and, second, the platform ‘www.hepsiburada.com’ was one of the main Turkish e-commerce suppliers (see paragraph 39 above), the Board of Appeal was fully entitled to find, in paragraph 54 of the contested decision, that the applicant’s predecessor in title and its director were aware of the use, at least in Türkiye, of the sign hepsiburada for online retail services when the contested mark was filed in 2017.
55 The applicant’s arguments do not call that finding into question. First, although the existence of a link or commercial relationship between the intervener and the applicant’s predecessor in title could have shown that the latter knew of the intervener’s earlier Turkish marks, the absence of such a link or relationship does not mean that there was no such knowledge (see, to that effect, judgment of 28 January 2016, DoggiS, T‑335/14, EU:T:2016:39, paragraphs 70 and 71). Second, as is apparent from paragraphs 35 and 40 above, the fact that the earlier marks were not registered and not known in the European Union is not relevant to the assessment of bad faith. Third, the claim that the intervener was allegedly not active in the European Union is contradicted by the fact that it has been established that the intervener has supplied goods to European customers since 2016 (see paragraph 36 above).
The intention of the applicant’s predecessor in title
56 The applicant submits that its predecessor in title applied for registration of the contested mark in the European Union first, after carrying out extensive research into the sign hepsiburada. At that time, it was not able to find either a trade mark or an identical or similar trade name in the European Union. The applicant submits that the sole intention of its predecessor in title was to use the contested mark for commercial purposes. Thus, its predecessor in title used that mark in good faith and in a descriptive way to indicate the nature and intended purpose of its website. The same is true of the applicant, which has sold many different products under that mark. The applicant states that neither it nor its predecessor in title wished to give the impression that they were affiliated with the intervener and its website ‘www.hebsiburada.com’, but reaffirms that they had a legitimate business strategy. Since no evidence was produced to establish the intention to take advantage of the reputation and well-known character of the intervener’s earlier Turkish marks, there should be a presumption of good faith. The applicant notes that the EU trade mark system is a ‘first-to-file’ system. Since the intervener chose not to register the earlier marks in the European Union, it must bear the consequences of failing to do so as well as those of the lack of substantial use thereof.
57 EUIPO and the intervener dispute that line of argument.
58 In that regard, it should be borne in mind that 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 (judgments of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraph 42, and of 8 March 2017, Biernacka-Hoba v EUIPO – Formata Bogusław Hoba (Formata), T‑23/16, not published, EU:T:2017:149, paragraph 44).
59 In the present case, the contested mark is identical or very similar to the intervener’s earlier Turkish marks (see paragraph 33 above). As stated in paragraph 61 of the contested decision, the applicant’s predecessor in title used the contested mark on its website ‘www.hepsiburada.life’, which was presented as the European branch of the intervener’s website ‘www.hepsiburada.com’. By contrast, the applicant and its predecessor in title have not demonstrated either use of the contested mark as an indication of the commercial origin of their own goods or a business strategy of which the registration of that mark formed part (paragraphs 59 and 64 of the contested decision). Furthermore, the undisputed fact that the applicant’s predecessor in title filed other applications for EU trade marks corresponding to the Turkish websites of third parties (paragraph 55 of the contested decision) indicates that the similarity between the marks at issue is not fortuitous.
60 In the light of those circumstances, as is apparent from paragraphs 58 and 63 of the contested decision, it is unlikely that the intention of the applicant’s predecessor in title when filing the contested mark was to use that mark honestly in the course of trade and not to take unfair advantage of the intervener’s earlier mark and block the intervener from gaining access to the EU market.
61 In accordance with the case-law cited in paragraph 28 above, it was therefore for the applicant to provide plausible explanations concerning the objectives and commercial logic of the application for registration of the contested mark and to demonstrate that the intentions of its predecessor in title were legitimate. The applicant merely repeats that the earlier marks were not registered in the European Union, an argument which has already been rejected in paragraphs 33 to 37 and 55 above, and relies on its alleged good intentions and those of its predecessor in title, without, however, providing evidence to establish any legitimate business strategy. Furthermore, in so far as the applicant refers to the first-to-file principle on which the EU trade mark registration system is based, suffice it to recall that the application of that principle is qualified, inter alia, by Article 52(1)(b) of Regulation No 207/2009, which is the subject of the present case (see, to that effect, judgment of 31 May 2018, Flatworld Solutions v EUIPO – Outsource Professional Services (Outsource 2 India), T‑340/16, not published, EU:T:2018:314, paragraph 21 and the case-law cited).
62 In the light of all of the foregoing, the Court holds that the Board of Appeal was fully entitled to find, in paragraph 67 of the contested decision, that the applicant’s predecessor in title acted in bad faith at the time when the contested mark was filed.
63 Accordingly, the applicant’s single plea in law must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
64 Under Article 134(1) 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.
65 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter.
66 By contrast, since EUIPO has requested that the applicant be ordered to pay the costs only in the event that a hearing is convened, EUIPO must be ordered, in the absence of a hearing, to bear its own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Dendiki BV to bear its own costs and to pay those incurred by D-Market Elektronik Hizmetler ve Ticaret Anonim Sirketi;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Costeira | Öberg | Tichy-Fisslberger |
Delivered in open court in Luxembourg on 21 February 2024.
V. Di Bucci | | S. Papasavvas |